Do you work with start-up companies and need a basic understanding of the various intellectual property issues that can arise?
I will be co-presenting in this online seminar that will help you:
- understand the trademark and copyright problems your client may encounter with branding;
- learn how to protect your client’s branding once established;
- familiarize your practice with patents, including what they protect, timing, and strategies to prevent inadvertent loss of patent rights before filing the application;
- understand trade secrets and the importance of non-disclosure and confidentiality agreements;
- recognize intellectual property issues relating to technology, including open source code and the cloud;
- establish a proactive approach toward intellectual property ownership between cofounders, employees, and vendors; understand business names, domain names, promotional issues, and website content concerns.
The program qualifies for 1.5 hours MCLE credit.
I would like to personally invite you to attend the upcoming Law Ed program titled, “Identifying Intellectual Property Issues in Start-Ups,” which I will be co-presenting via live webcast on Tuesday, May 27th.
Presented by the ISBA Business Advice and Financial Planning Section
Co-Sponsored by the ISBA Intellectual Property Section
February 12, 2014
One of the key issues that must be examined when negotiating or drafting any contract is how the parties may get out of, or “terminate,” that contract. While many attorneys will rest on standard “termination for breach with notice and cure” language, the recent case of Powertech Tech. v. Tessera, Inc. demonstrates how artful drafting can put limitations on a party’s right to terminate. The Opinion in U.S. District Court for the Northern District of California case No. C 11-6121 can be found here.
Powertech and Tessera were parties to a patent license agreement, although the court’s reasoning does not seem limited to only those types of agreements. The license agreement allowed Powertech to use Tessera’s patents in exchange for payment of license fees.
The contract contained the following clause regarding termination for breach:
“Termination for Breach. Either party may terminate this Agreement due to the other party’s breach of this Agreement, such as failure to perform its duties, obligations, or responsibilities herein (including, without limitation, failure to pay royalties and provide reports as set forth herein). The parties agree that such breach will cause substantial damages to the party not in breach. Therefore, the parties agree to work together to mitigate the effect of any such breach; however, the non-breaching party may terminate this Agreement if such breach is not cured or sufficiently mitigated (to the non-breaching party’s satisfaction) within sixty (60) days of notice thereof.”
The court held that Powertech was not permitted to terminate a license agreement with Tessera for Tessera’s breach because Powertech itself was in breach of the agreement by its failure to pay royalties to Tessera.
Acknowledging Powertech’s argument that Tessera was itself in breach, that in and of itself did not give Powertech the right to terminate the contract. Only a “non-breaching” party may terminate the agreement. Said the court “[a]lthough the first sentence of the termination clause is broad – ‘Either party may terminate this Agreement due to the other party’s breach’ — the language of the clause as a whole makes clear that only a non-breaching party may terminate. Reading the clause as a whole, the court concluded “[t]he termination clause refers to a “breaching party” and a “non-breaching party” in every sentence after the first… [therefore]…the clause requires the party seeking to terminate for the other party’s purported breach to be substantially in compliance with its own obligations first.
The Powertech agreement’s termination clause is useful because it put conditions on a party’s ability to terminate the agreement even when the other party was in breach.
September 19, 2013
A presentation on what goes into creating original designs and how these differ from copycats.
WHERE: Decoration & Design Building, J. Robert Scott Showroom, Suite 220
WHEN: Wednesday, October 2,2013 !2 p.m.
WHAT: From film to fashion, creative industries are taking steps to protect and promote original work. Designers and manufacturers need to know what steps they can take to protect their designs, their businesses, and their profits. The discussion will address issues related to how to protect original design (copyright & design patent) and the manufacturers (trademark, unfair competition).
INTERIORS Magazine Editorial Director Michael Wollaeger
J. Robert Scott Founder Sally Sirkin Lewis
Designer Laura Kirar [Web Site]
Intellectual Property lawyer David Adler
Showroom reception to follow.
Download the full Fall Decoration & Design Building Market Brochure Here.
On October 2, 2013, I will be attending the Decoration & Design Building Fall Market where I am giving a presentatIon on protecting original furniture & textile designs. Those in attendance share a belief that style and design matter.
As designers and purveyors of good taste, you may spend months developing a concept, selecting materials, agonizing over the exact curve of the arm of a chair. Manufacturers may refine the design, invest in tooling to build it, promote it, and get it to market. Merchandise buyers may spend months reading, researching, attending events such as this to obtain and fill your showrooms and catalogue with ineffable elements of style. This is original, authentic design. Authentic designs—pieces produced by designers or their authorized manufacturers—are investments.
Therein lies the problem for today’s furniture designers and retailers. It takes intellectual and financial capital to conceive, create and produce good design. Yet, today’s consumer driven, price-focused economy is making it more and more difficult for a designer to protect and profit from the investment of this intellectual capital.
This presentation will focus on why certain designs are protectable, how to protect them, and how to defend against knock-offs.
August 22, 2013
Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd., Fed. Cir., No. 2012-1221, 8/13/13
On August 13, 2013 the Federal Circuit held that litigation misconduct and unprofessional behavior may be sufficient to meet the “exceptional case” standard under 35 U.S.C. §285 for an attorney fees award of $9 million.
Relying on Brooks Furniture Manufacturing, Inc. v. Dutailier International, Inc., 393 F.3d 1378 (Fed. Cir. 2005), the court clarified that “it is only absent litigation misconduct or misconduct in securing the patent that we require the finding of both ‘bad faith’ and ‘objectively baseless’ litigation to warrant sanctions under §285.” In this case, the district court did not err in awarding attorney fees for the entire litigation because Defendant’s “extensive misconduct was enough to comprise an abusive ‘pattern’ or a vexatious ‘strategy’ that was ‘pervasive’ enough to infect the entire litigation.”