Ray Van Dyke Teaches About IP in Montgomery County, Maryland

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 meetings have covered an overview of all IP rights, and two meetings about patents.

The next meeting, February 20, 2016, will address the current issues and controversies involving the remaining IP rights, i.e., copyrights, trademarks and trade secrets, along with a bit of antitrust.  For those who missed the talk about patents and would like to hear more, I am having a refresher on patents at 8:30 AM, with the talk about the other IP rights starting at 9 AM.

The BAMC is offering 3 hours of CLE for this event for those needing it.

As the speaker, I can say that the material will cover not only the law, but will include anecdotes about famous cases, 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

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

Jim Pooley to Speak at LES DC

The Licensing Executives Society (www.les.org) is having their big annual meeting soon in New York. Hope to see viewers there.

The Greater Washington, DC Chapter that I chair, covering the District, Northern Virginia and now Maryland has meetings throughout the region.  Many thanks to recent speakers and registrants for coming to the meetings.

At the next meeting, in DC on October 21, former Deputy head at WIPO and prominent attorney James Pooley will talk of issues in trade secret law.  Register at: http://www.lesusacanada.org/chapters/usa/washington-dc-chapter/october-21-2015-washington-dc-chapter-meeting

The November meeting is being finalized, and the holiday event is being posted.  The LES party will be on December 17, 2015 in Washington, DC.  See the DC Chapter post for more.  http://www.lesusacanada.org/chapters/usa/washington-dc-chapter

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 contact 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

IP in 2014: The Good, the Bad and the Idiotic

For those in the Washington, DC area, I am giving a talk at INCA (http://www.dcinventors.org/) next Monday evening. INCA, which stands for the Inventors Network of the Capital Area, is a nonprofit educational organization whose members are interested in patents, the innovation process, product design, marketing, licensing, prototyping and other product development issues. I am a proud member of INCA.

Hope to see you there!

Ray Van Dyke, vandyke@acm.org, www,rayvandyke.com

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.