World IP Day 2017 Redux

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The celebration of World Intellectual Property Day at the U.S. Patent & Trademark Office was held on April 26, 2017, where April 26th is the official anniversary date.

After the Chief Policy Officer of the USPTO, Shira Perlmutter, started the event, there where a number of distinguished speakers, including John Sandage, World Intellectual Property Organization (WIPO) Deputy Director General, Patent and Technology Sector, Joseph Ferretti, Vice President and Chief Counsel, Global Trademarks at PepsiCo, Inc. and President of the International Trademark Association (INTA),  Jeanine Hayes, Chief IP Officer of Nike, Inc., and Mario Bollini, Co-founder and Chief Technology Officer, Global Research Innovation and Technology, Inc. (GRIT).  Ms. Hayes demonstrated Nike’s commitment to improving lives with innovation, this year’s WIPD theme, with the latest in Nike technology.  Mr. Bollini then demonstrated his all-terrain Freedom Chair for the disabled.

it was a hard act to follow, but follow I did with my talk on the History of Innovation, with examples of important inventors that improved lives, such as Edison (the light bulb illuminating the night ), Morse (transmission of information faster than horses), various medical innovations, such as that of Raymond Damadian of Fonar (the creator of the magnetic resonance imager) and many other fascinating technologies.

I also talked about the origins of the intellectual property laws and the reasons we have them.  For patent and copyright, our Founders enshrined these rights into the Constitution itself – with the other “rights” set forth in the attachment, The Bill of Rights.  Also, our Founders in essence democratized the U.S. patent system, permitting anyone to file for and obtain a patent.  This was a big change from the systems on the Continent.  George Washington extolled the benefits of a patent system in the First Inaugural Address.  Also, Abraham Lincoln was an avid fan of the patent system and spoke at length about its advantages – equating the importance of the patent system to the founding of the United States.

The above speakers also spoke later at the Senate Hart building, and numerous Congressmen showed up, including Representative Goodlatte of Virginia, with whom I spoke about the importance of the patent system benefiting all Americans, whether individuals, small companies or large corporations.  We both strongly agreed that this was in America’s best interest.  Under his direction, the House of Representatives that day approved by a vote of 378-48 the Register of Copyrights Selection and Accountability Act  (H.R. 1695), which would make the appointment of the Copyright Registrar a Presidential one (instead of the current Librarian of Congress) and for a term of ten years.

I should also add that Senator Coons of Delaware, a staunch supporter of the patent system, also spoke.  His strong advocacy of the patent system is quite welcome to the patent bar and all innovators relying on the patent system.

Patent Damages Symposium in Washington, DC

On February 23, 2017 in Washington, DC, the Licensing Executives Society (www.les.org) is having a Patent Damages Symposium with prominent damages professionals and IP attorneys, including Krista Holt, CEO of GreatBridge Consulting, Inc, Ryan Morris, a partner at Sidley & Austin, Jennifer Vanderhart, PhD Economist and a Principal at Analytics Research Group, Robert L. Vigil, PhD,  Principal  at Analysis Group, Inc., and Raymond Van Dyke, Principal at Van Dyke Law.   We will talk about recent cases affecting patent damages, techniques for patent prosecutors to maximize damages and current trends in damages.

The link is http://www.lesusacanada.org/events/EventDetails.aspx?id=921187&group=160111

This meeting constitutes my additional efforts as the Greater Washington, DC Chapter Chair to promote the organization and otherwise help the IP profession and practitioners with practical programs.  For those in DC, Virginia and Maryland, please feel free to contact me if you have a speaker in mind or a topic that needs addressing. With the eclectic wants of the Greater DC membership, we have seen it all, and welcome more!  For those outside of the DC Metro area, thanks for reading about us!

If you have any suggestions or want to speak when you visit the area in future, please email me.  Conversely, I am open to invitations to speak elsewhere. Ray Van Dyke, 202.379.3903, vandyke@acm.org,  Greater Washington, DC Chapter Chair for LES, and Patent/IP practitioner.  http://www.rayvandyke.com

Beyond the Alice Event Horizon: the spaghettification of software patenting

For anyone interested in learning more about the state of affairs for software patents now two years after the Supreme Court Alice decision, I am giving a free webinar this Thursday, April 13, 2016, at 1 PM EST USA on behalf of the Licensing Executives Society.  The link to register is below.  I wish to thank my friend Sanjay Prasad for this opportunity to speak.

http://www.lesusacanada.org/events/EventDetails.aspx?id=800491&group=160372

As a patent specialist for many years, software to me represents one of the great things about American ingenuity.  Although my practice spans many technologies, the joys of handling these cases has been tempered a bit by Justices’ and legislators’ misguided efforts to thwart one of America’s fortes (and one of our chief exports).

I first wrote code many years ago in Fortran IV, and later got a Masters in Computer Science at the University of North Carolina at Chapel Hill, one of the top schools for that discipline.   At UNC, I also studied under Dr. Frederick Brooks, a preeminent scholar and researcher, before heading off to law school and learning to protect inventions of all sorts. Now, over 25 years later and well over a thousand patents defended and obtained for many clients, there are stories to be told.

My talk will address how we got into this situation where innovation is being frustrated and the patent system is perversely held to blame.

This voyage is free. I hope you sign up and join me, where I will define spaghettification;)

Ray Van Dyke

vandyke@acm.org

(202)378-3903 USA

Ray Van Dyke Teaches Course on Intellectual Property at SMU

Next week at Southern Methodist University in Dallas, Texas, I reprise my course on intellectual property. Excerpts from the course description are set forth below and available online at  http://lyle.smu.edu/~matula/IPIT/

Dr. David Matula and I have taught the class since 2000, and I am honored to teach the class again on January 15 and 16, 2016. The Course is open to everyone and I hope to see those that can attend next week. Engineers, scientists, corporate and business people, faculty and students have praised the class, and 2016 will be no exception! My presentation includes all the basics on IP, current developments, and purposes of IP to our society (and the past).  For beginners, the class is a lively introduction to IP.  For those with some knowledge of IP, the materials offer a refresher with recent case law.

I hope to see you there!

Ray, vandyke@acm.org

COURSE DESCRIPTION

What is intellectual property? Why should I patent my innovation? How do I draft my claims?  This course will address the importance of technology and intellectual property in America, the fundamentals of patent, copyright, trademark and trade secrets for the lay person, and the real world application of those rights.

Fair use, open source, and alternatives will be described and interpreted.

Current developments and changes are also covered. In particular, the America Invents Act of 2011, the most monumental change to patent law since 1836, will also be discussed, and the significant effects on universities, small inventors and companies highlighted. Supreme Court, Legislation and other developments that affect these rights will also be covered in this popular and engaging presentation.

TOPICS TO BE COVERED BY THE COURSE INCLUDE:

  • History and Philosophy of Intellectual Property Rights and their role in the information age
  • Intellectual property’s impact on information system design and development
  • The inventor’s role in recognizing and protecting a patentable idea
  • Analysis of ground breaking industry patents
  • Impact of Emerging Technologies on Intellectual Property

DETAILS ON LOCATION AND CREDIT

Computer Science & Engineering Department

Bobby B. Lyle School of Engineering
Presents

 16th Annual Short Course on Intellectual Property and Information Technology

January 15 & 16, 2016:  Friday 9:am-5:pm, Saturday 9:am-1:pm

Palmer Conference Center for Engineering Leadership

Caruth Hall, Rm. 406

3145 Dyer Street, Dallas, TX  75205

Short course fee:  $200 (group rates available)

SMU Students:  Credit – one hour:  Register for CSE 5111/7111

Non-credit complimentary SMU student registration available (contact beth@lyle.smu.edu)

Any remaining questions? Contact me at vandyke@acm.org or visit my webpage at http://www.rayvandyke.com

Ray Van Dyke teaching a Class on Patent Law

 

As noted, as Co-Chair of the Intellectual Property Section for the Bar Association of Montgomery County (BAMC), I am pleased to report that the IP Section is having a continuing series of presentations on the fundamentals of intellectual property law  at the Bar headquarters in Rockville, Maryland.  See: http://montbar.site-ym.com/?62

With the increasing value of intellectual property in today’s economy, as well as the ongoing controversies, non-IP professionals, whether attorneys, scientists, business people, and interested citizens, all want to better understand the workings of these legal principles and tools. The first meeting was an overview of all IP rights.

The next meeting, December 1, 2015, will address the current issues and controversies involving patents, e.g., the so-called troll movement and ongoing legislative efforts in that regard.  At the last meeting, on November 11, 2015, the basics of patents were discussed, along with the historical and societal underminings of patents in society, partoicularly in the United States with the strong support of George Washington, Thomas Jefferson, James Madison, Alexander Hamilton and other Founders, as well as Abraham Lincoln, a President well-versed in technology and greatly appreciative of the American system of patent law and the advantages accorded.  Sadly, many of those advantages are being undermined by the rash of legislation, including the AIA.

Copyrights, trademarks and trade secrets will be covered in 2016.

As the speaker, I can say that the material will cover not only the law, but will include anecdotes about famous cases and inventors, putting the material into the context of the times.  My materials have been collected and coalesced over the last 16 years as part of an in-depth course I teach at SMU to engineers, business people, teachers, students and other interested parties.

If anyone has any questions about the course and these meetings, please do not hesitate to contact me.

For attendees, I require an RSVP so that I can gauge the audience and handle logistics. So, if learning a little about IP law is of interest, this series of presentations will do the trick. I look forward to meeting you there!

Ray Van Dyke, Co-Chair, Intellectual Property Section, BAMC

202.378.3903  vandyke@acm.org

Shark Tank and Trade Secrets

On a recent episode of Shark Tank, the hosts quizzed the idea presenter about patent coverage for her new soap product.  She said she had none, but was pursuing trade secret protection instead.  It seemed to me, an IP practitioner, that she had likely attempted to obtain patent protection, but was having problems in that regard.

Patent protection on a product is the strongest protection you can obtain to prevent others from copying your success.  The idea presenter seemed to have a lot of word-of-mouth attention on her product, and said that her soap was different because it included 63 ingredients along with a loofah. It would be relatively straightforward to get a patent that required 63 separate ingredients, but any infringing product would require the inclusion of all 63 ingredients (or perhaps a smaller but still large number of them if the patent claims were crafted broadly).  But broad patent coverage on soap would be tricky to obtain.  As a patent practitioner, I have well learned that consumer products of this sort have a lot of “prior art,” i.e., previous inventions and products out there that would prevent broad patent coverage. You cannot patent something already known or close versions of them.

Hence, she needed to follow a different approach.  The inclusion of 63 ingredients in her soap makes it unique, and her customers pay a higher price than regular soaps.  Instead of patenting, trade secret protection can accord her some level of protection against someone stealing the recipe or such.  For example, assuming that all of her 63 ingredients, her manufacturing equipment, her methods and know how are kept as secret as possible, then trade secret protection would apply to her proprietary techniques.  Since she sells the product, however, some aspects may become known, e.g., governmental requirements for listing ingredients.  Nonetheless, her proprietary production techniques may remain secret.  The ingredients and process of making of Coca Cola have remained a secret for over a hundred years.

Trade secrets cover secrets, i.e., something not generally known; otherwise, how could you call it a secret? Processes, recipes, client lists, and other sensitive data and information can constitute a trade secret.  Also, trade secrets require the holder to treat the secrets as a secret, i.e., confidentially.  If not, then the secret is deemed out and anyone can duplicate.  Measures must be taken to maintain secrecy, such as restrictions on access, confidentiality clauses, locks and the like.  Failure to treat sensitive subject matter appropriately as secret can void your allegation of trade secret misappropriation, such as where a competitor visits your plant.  Steve Jobs toured Xerox’s facilities and walked away with the crown jewels, i.e., Xerox’s new paradigm for computing, which became Apple’s.  Breweries, for example, are vulnerable as plant visitors can easily swipe a surface for the proprietary yeasts and other ingredients used.

When I was a junior attorney, Procter and Gamble were marketing Duncan Hines cookies, the processing of which was covered by patent.  Nabisco, Frito Lay and those naughty Keebler elves were charged with patent infringement.  Evidence in that case involved trade secret misappropriation through subterfuge, e.g., trespass to observe the processing techniques and theft of ingredients.  The case settled on the courthouse steps, but the facts of the case were quite entertaining.

Trade secret laws are State and federal in nature, and there are much stronger economic espionage acts to cover the theft of trade secrets.  The United States loses countless billions of dollars each year due to trade secret theft.  With the Internet and cybertheft, cyberwarfare (and cyberterrorism), the realms of trade secret theft are virtually boundless, as incredibly sensitive national secrets, institutions and infrastructures are vulnerable to hacking, whether for fun, mischief or maliciousness.  Confidential data lists, such as Target’s and others’ customer lists, are trade secrets and highly valuable. Proper trade secret protocols and heightened security are a requisite.

Thus, trade secrets can be quite valuable.  However, it is best to patent wherever possible.  Although the Shark Tank idea presenter’s innovation, customer lists and other data may not lend themselves to patent protection, trade secrets can accord some protection for those innovations not meeting the stringent requirements for patent.  However, our Constitution advocates the promulgation of information instead of hoarding new ideas.  The patent system, for example, requires the publication of the full invention (and processes) in exchange for the patent, thereby ensuring the release of that information into the public domain, albeit at a short-term cost.  That is the patent bargain.  In a struggle between patent and trade secret, the patent system is most likely to prevail.

The sharks know the value of a good idea and they prefer patent protection.  The soap lady, although having a great product, did not have patent protection and did not get an offer.

I should add that other intellectual properties could apply to help the innovator.  For example, copyright protection may be used to protect code and visual aspects.  A good trademark can engender considerable interest in a product also, garnering good will and market share, which, of course, is music to a shark.