The Indiana Lawyer

More remote employees? Time to review trade secret policies

August 19, 2020

In the ongoing work conditions surrounding the COVID-19 pandemic, business owners may consider that their principal concern is how to make it easier and more efficient for employees to do their jobs remotely. But as businesses streamline connections and move information from office hardware to home computers, they should not forget to safeguard the trade secret information that may be moving around.

Indiana’s trade secret statute (I.C. 24-2-3) came out of the Uniform Trade Secret Act and so is quite similar to the provisions of many other states. It defines a “trade secret” as information that has economic value from not being generally known to or readily ascertainable by others and that is subject to reasonable efforts to maintain its secrecy (I.C. 24-2-3-2). Such information includes formulas, patterns, compilations, programs, devices or processes. Anything from a data processing algorithm to the “secret ingredient” in the local restaurant’s chili can qualify as a trade secret, so long as it has value from its secrecy and its owner takes steps to keep it secret.

To read the full article, visit The Indiana Lawyer


What I Learned In My 7 Months of Practice

May 27, 2020

At the time I sit down to write this article, I have been a practicing attorney for a whole seven months. I have learned a lot in this time and want to share some tips that have been helpful to me. Do I recommend you at least consider them? Sure, but as with most everything in life, everyone needs to decide what works best for them. So without further ado, here are my top tips for new attorneys just starting out.

Develop your craft

Often, attorneys want to hit the ground running right out of law school and acquire as many clients as fast as they can. This sometimes includes getting involved in as many groups as you can fit into your schedule. While these are all good things to start developing immediately, the first and most important thing you want to accomplish is becoming a great lawyer. Do not get me wrong, I do not think I have accomplished this in a mere seven months, nor do I think anyone can; the learning curve is just too high. However, it is important to start developing the skills and habits necessary to develop your craft. If you work to obtain the largest client base possible before you actually know what you are doing, you are doing a disservice to your clients and yourself, and you probably won’t have any repeat clients once they figure out you aren’t a great lawyer yet.

There are several things you can do to help develop your skills:

To read the full article, visit The Indiana Lawyer


Thomas Q. Henry Honored with Leadership in Law Award from Indiana Lawyer

April 29, 2020

The law firm of Woodard, Emhardt, Henry, Reeves & Wagner, LLP is proud to announce that Thomas Q. Henry was chosen as a Distinguished Barrister by The Indiana Lawyer as part of its 2020 Leadership in Law Awards.

The Indiana Lawyer annually recognizes Indiana attorneys who have demonstrated a commitment to their profession, the clients they serve, and to the community by presenting Distinguished Barrister award.

As a senior partner with the Firm, Mr. Henry concentrates his practice on the strategic development and management of IP portfolios with special emphasis on providing business-focused legal advice. He assists clients in evaluating IP coverage, protecting core IP assets, handling Hatch-Waxman cases, domestic and international patent prosecution, and preparing infringement, non-infringement, freedom to operate, and validity opinions.

Mr. Henry has served as President of the Indianapolis Bar Association and as a member of the Board of Directors of the Indiana State Bar Association. He served on the Board of the Indiana Bar Foundation and was as an Adjunct Professor at the Indiana University Robert H. McKinney School of Law, teaching both Intellectual Property Law and Patent Law to more than 1,000 students over a 20+ year span. He was also Chair of the Indianapolis School of Law Alumni Association, and recipient of the school’s Distinguished Alumni Award. Mr. Henry has also served on multiple community boards and held several leadership positions with nonprofit organizations including Chairman of the Board of Directors of Make-A-Wish Foundation of Indiana, and of the American Pianists Association, and on the Board of Young Audiences of Indiana. He also served as a member of the Board of Directors of the Indianapolis Zoological Society, Indiana Repertory Theater and Indianapolis Symphony Orchestra.


Patent priorities, trademark cautions for the eco-focused

April 17, 2020

Earth Day is upon us, and the World Intellectual Property Organization has announced a theme of “Innovate for a Green Future” for World Intellectual Property Day on April 26. Here are two bits of eco-minded intellectual property law.

Special treatment

Energy-saver patent applications can get special treatment. Technologies aiming to reduce energy consumption, move to greener sources of energy or improve the environment are highly prized. The U.S. Patent and Trademark Office recognizes that fact with opportunities to move such patent applications ahead in the queue.

By rule (37 CFR 1.102) and policy (Manual of Patent Examining Procedure (MPEP) 708.02), the USPTO will advance (or make “special”) applications for inventions which “materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil.” MPEP 708.02 (III); see 37 CFR 1.102(c). The applicant must file a petition requesting “special” status, and no fee is required. In cases where the environment-improving quality may not be evident, a statement explaining how the application fits the above standard should be filed. The MPEP notes the standard may not be met where there is “speculat[ion] as to how a hypothetical end-user might specially apply the invention” in an appropriate way, or where “some minor aspect of the claimed invention may enhance the quality of the environment.” MPEP 708.02 (III).

Another category for “special” applications concerns inventions that “materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources.” MPEP 708.02(IV). Applications that develop hydrogen fuel technologies or solar power, or provide a reduction of energy consumption in equipment or household appliances, can be eligible for “special” status. A fee-free petition must be filed, with explanations if the necessary material contribution is not evident. Likewise, speculative effects or minor aspects of the invention may not be sufficient to move the application ahead in the examination line.

In each case, the MPEP provides additional requirements for applications, including limitations on the number of claims and inventions claimed, an acknowledgement that dependent claims will not be argued separately on appeal, and an agreement to conduct an early interview with the examiner. See MPEP 708.02(a). In many cases, these additional requirements will not create a significant additional burden. Nevertheless, in addition to normal precision in preparing claims, the applicant should give proper thought to whether these requirements may significantly impact future prosecution or arguments, and should organize the claimed subject matter carefully.

Practitioners will note there is a generalized request to prioritize examination by which up to 12,000 applications per year can be moved forward. Limitations on claims similar to those noted above apply to prioritized applications. The principal advantage to using the petition process for environmental-quality or energy-related inventions is cost savings. No petition fee is needed for them, while the prioritized examination fee for a large entity is $4,000. While the annual ceiling on prioritized applications has never been reached, the numbers are increasing, so there is a chance prioritized examination would not be available late in a year.

‘Green’ may not mean go ahead…………

To read the full article, visit The Indiana Lawyer


Is a Taco a Sandwich? This IP Question Isn’t Patently Absurd By Chris Brown

December 12, 2018

We are all aware that sometimes things just don’t fall neatly into categories. Is it “nature” or “nurture”? Is my legal issue more in tort or in property, common law, statutory or Constitutional areas?

We all know that intellectual property law is commonly divided into several easily definable “buckets.” Patents concern inventions, whether machines, compositions of matter, methods or designs. Copyrights protect original works fixed in a tangible medium of expression. Trademarks are words, logos or other “devices” that serve to identify the source of a product or service. Each of these property concepts have particular rules governing what subject matter they apply to, when they come into existence, and what activities by others with respect to them are actionable.

I was reminded recently of a client who came to see me with drawings of a chair he had designed, and he wanted to protect it. Since he was an architect, he immediately thought of copyright — he considered the chair to be essentially an article of sculpture, with his particular design of the arms, legs and back the expression that was fixed in the tangible wood of the chair. As we looked at the design and mulled over the possible ways others might find value in it, it became clear that the chair might fit into multiple IP buckets — or perhaps none at all.

To read the full article, visit: The Indiana Lawyer

 


Ounce of Prevention for Business IP Assets Worth Pound of Cure By Chris Brown

April 18, 2018

It may sound exhausting. Your client is focused on starting a new business and of course, they have plenty on their plate. Purchasing equipment and inventory, leasing premises (if not operating from home), arranging sales and/or other business development opportunities, as well as getting the word out on the new business will take every bit of a 24-hour day.

However, the fruits of labor will pay off. Indiana offers an easy online filing system as well as access to many other resources. Organizing a business structure may just be the easiest step.

Your client needs strategies and concepts regarding the intellectual property assets encompassed in the new business even before the articles of incorporation are filed. Many pieces may already have been created and others will be developed as the business grows. Remember, as with any other task, an ounce of prevention in the form of planning for intellectual property is worth at least a pound of cure, especially when the client is engaged with the day-to-day efforts of running the business.

Trademarks and Trade Names

Clients may not understand that adopting a company or corporation name (even one not used as a brand) can result in unfair competition claims under the federal Lanham Act (e.g. 35 U.S.C.§ 1125) or state law.

I’ve seen clients that have incorrectly assumed that registration of their company name is without consequence. I’ve also experienced that similar misconceptions arise with domain names. Most states, Indiana included, do not have a process to evaluate the likelihood of consumer confusion among corporate names. If Indiana does not find a match with an existing corporate name, it will usually go ahead and register the name. The same goes with domain names. If a registrar does not find a match with an existing domain name, the registration will proceed. Only later may the client discover that there is a non-identical, yet potentially confusing domain name, corporate name or trademark that has already been registered by another entity.

Indiana has a searchable database of registered business names: https://bsd.sos.in.gov/publicbusinesssearch. Once your client has decided upon a company name, guide them to take the simple step of searching the Indiana database to review any similar names and the business they conduct. Note that this review is not comprehensive. However, it can be utilized to locate and avoid specific pitfalls. Your client can also arrange for more in-depth searches. Again, before the corporate articles are filed, a basic, quick search is highly recommended.

Trade Secrets

If the client has no employees, trade secret issues may be minimal. The new businessperson always needs to be aware of what business information is valuable and safeguard that information. The easiest step is to keep such information locked away when not in use, whether digitally (separate server or drive) or physically.

When employees, investors, or corporate officers come into the picture, the small-business person needs to consider who needs access to valuable information and how to compartmentalize it. A good practice is to get written agreements from employees and others involved with the business that include clauses requiring them to use such information for the business, and not for themselves. Also, keep a log of people admitted to nonpublic areas of the business’ premises, and have them sign a short agreement not to divulge what they observe or learn.

Patents

Not all new businesses will include an inventive product, method, or device as part of its plan. However, a new businessperson needs to know that the clock starts ticking on applying for a patent in the United States when an invention is “ready for patenting” and non-confidentially disclosed or otherwise made public. Once that happens, the client has one year from such publication to file a U.S. application. Accordingly, as a new business is formed, Quick decisions concerning a patent search or application and secrecy agreements (preferably written) with investors, employees or others may be needed.

Copyrights

Copyright automatically exists in an “original work of authorship” as soon as it is “fixed in a tangible medium of expression.” A copyright is initially owned by the author unless (1) assigned by the author, or (2) a “work made for hire,” i.e. made by an employee in the scope of employment.

When others are the authors, the new businessperson must be aware that he or she may not own, and may even have limited rights to, materials created for the business. Web designers, for example, may retain ownership of copyright, and while the new business may use material created by the web designer, the businessperson may have limited ability to alter or add to the material. The new business needs to be aware of, or negotiate away, any such limitations.

The number of people who assume that material on the internet or posted on social media is free for anyone’s use is remarkable. Informational sites frequently allow a license to use material for noncommercial or educational purposes. However, know that the new businessperson (your client) needs to investigate and observe such licenses, where they exist. Fair uses are permitted by statute (17 USC 107), but are generally not associated with commercial use of copyrighted material. It is vital for a new businessperson to remember that photographs, text or other online material are rarely free for the taking.

Winding it Down

As with life in general, whether a business is large or small, it does not last forever. Intangible property should be treated with as much care as tangible property. Hoosiers may remember when the Roselyn Bakery chain ceased operation, but the trademarks and associated goodwill were valuable assets that continued in use.

Intellectual property can pass by assignment or by operation of law. In a bankruptcy, patents, copyrights, trademarks (with associated goodwill) and trade secrets may be sold or assigned for the benefit of creditors. In the winding up of a corporation or limited liability company, intellectual property must be considered in the disposition of all property. While it may seem that there need be little or no concern for intellectual property in a soon-to-be defunct small business, potentially valuable rights are at least in ownership limbo and may be lost if provision for them is not made in the winding down.

In a noncorporate business, where any intellectual property owned by the “business” is in fact owned by the individual proprietor, winding down the business may have little effect on the property of the business — it remains owned by the proprietor. However, in such cases any intellectual property — which can include copyright in personal and business papers — transfers on the death of the owner occur according to a residuary clause in his or her will, or according to the applicable law of interstate succession.

To view the article in The Indiana Lawyer click here.