Article prepared by and republished courtesy of our colleagues in the Intellectual Property and Technology practice group of DLA Piper; originally published here: http://www.dlapiper.com/obama-moves-to-curb-patent-trolls/.
President Barack Obama has announced a new executive and legislative initiative aimed at curbing patent infringement suits by "patent trolls," who generate revenue through extortionate litigation, not real innovation.
CONTRIBUTED BY
Trent Dykes
trent.dykes@dlapiper.com
A great reminder compliments of our colleague Mark Radcliffe: On March 16, the US patent system will undergo a fundamental change from the current “first to invent” to a “first to file” system.
By way of quick background, a “first to invent” system means that even if another party files a patent application on your invention first in the US Patent and Trademark Office, you will still be entitled to obtain a patent on your invention if you can prove you created the invention first. The new “first to file” system, which becomes effective on March 16, 2012, provides that you can no longer get a patent by proving that you actually created the invention before the filing date of the first patent application.
Patents have become an increasingly important part of the assets of startups, especially since most startups exit through merger. PwC, in its recent report on US technology M&A, explains that “companies with strong patent portfolios continue to be likely targets for future acquisitions, as modern competitive pressures force businesses to acquire and defend intellectual property rights.”
CONTRIBUTED BY
Megan Muir
megan.muir@dlapiper.com
Gina Durham, an intellectual property partner with DLA Piper's Chicago office, explains the new generic top-level domain (gTLD) program underway by Internet Corporation for Assigned Names and Numbers (ICANN). Over the past several months, ICANN has been accepting applications for the new gTLD program.
This program allows organizations to own their own top-level domain extension and aims to greatly proliferate the number of available domain extensions beyond the limited number of extensions, such as “.com” and “.org,” to which Internet users are accustomed. With a few exceptions, an organization could have applied to have almost anything to the right of the dot, including its own company brand name or a generic term.
In a couple of weeks, the public will be able to review, for the first time, the list of gTLDs for which companies have applied. In advance of the official reveal date, a number of organizations are now announcing the subject of their applications. Google has announced that it applied for “.google,” “.docs,” “.youtube,” and “.lol.” The CUNA (Credit Union National Association) has announced that it applied for “.creditunion.”
Read the rest of Gina's article here to learn more about strategies to help protect your company's brand names and Internet presence, including a summary of the formal objection process and dispute resolution procedures. Find additional information about the gTLD process as well as trademark and copyright issues at our sister DLA Piper blog, Re:Marks on Copyright and Trademark.
CONTRIBUTED BY
Trent Dykes
trent.dykes@dlapiper.com
Earlier this week Twitter announced that they plan to amend their standard employee innovations assignment agreement to keep “control in the hands of engineers and designers” as part of Twitter’s commitment to its employees “that patents can only be used for defensive purposes … and that [Twitter] will not use the patents from employees’ inventions in offensive litigation without their permission.” This proposed amendment is being called the “Innovator’s Patent Agreement” (or IPA), a copy of which can be found here.
Others have said that adoption of the IPA is unilateral disarmament that could ruin the value of a company’s patent portfolio.
In trying to understand both sides of the argument as to why a company would or would not want to implement the IPA, I thought the following two articles did a great job of summarizing the salient points and counterpoints:
It will be very interesting to see where the market goes on this.
CONTRIBUTED BY
Megan Muir
megan.muir@dlapiper.com
As companies struggle to protect and safeguard personal information, managing the legal responsibilities related to processing personal data consistent with applicable laws is a growing challenge. A well-constructed and comprehensive compliance program can provide an effective risk-management tool. Our colleagues from the DLA Piper Information Law Team have published a handbook with an overview of the applicable privacy and data protection laws and regulations across 58 different jurisdictions, including a section on enforcement. Edited by Cameron Craig, Paul McCormack, Jim Halpert, Kate Lucente, and Arthur Cheuk, the DLA Piper 2011/2012 Data Protection Laws of the World Handbook is available here.
Our D.C. colleagues Radiance Walters and Debbie Rosenbaum have a great piece posted on Corporate Counsel Magazine concerning contests, sweepstakes, and giveaways using social media. They discuss the responsibilities and pitfalls associated with these activities. Key aspects they discuss are:
Read the full article here.
In this recent post, David Kramer, a trademark and copyright attorney in DLA Piper's Washington, D.C. office, discusses how lawmakers appear to be backing away from the PROTECT IP Act (PIPA) and Stop Online Piracy Act (SOPA) in the wake of recent widespread Internet protests. The post originally appeared on DLA Piper's blog "Re:Marks on Copyright and Trademark." See a related post on competing legislation, the Online Protection and Enforcement of Digital Trade Act (the "OPEN Act").
CONTRIBUTED BY: Joshua Briones and Patrick S. Park
A judge ruled last week that PhoneDog.com, a web-based community of cell phone information, has properly pled a trade secret and conversion claim arising out of Phonedog’s allegations that it is entitled to certain Twitter followers that a former employee had built up during his four years at the company, where he worked as a blogger.
The case raises at least two questions. First, who owns a company Twitter account? Second, how much is a Twitter follower worth?
CONTRIBUTED BY
Megan Muir
megan.muir@dlapiper.com
Courtesy of our colleagues in DLA Piper's Technology and Sourcing Group comes the October 2011 Global Technology and Sourcing Newsletterwhich includes articles on cyber security, the European Commission’s €9 billion investment to improve pan-European access to high-speed broadband, proposed reforms of the UK’s online gambling regulations, social media in the workplace, outsourcing and more. The entire October Newsletter, edited by Mark O'Conor, is available here. You may also access the September Global Technology and Sourcing Newsletter here.
CONTRIBUTED BY
Megan Muir
megan.muir@dlapiper.com
From our colleague Robert Benson in Los Angeles, here is a helpful summary of the recent patent law changes as a result of the Leahy-Smith America Invents Act (H.R. 1249) signed into law on Friday, September 16, 2011. The biggest change – giving priority to the inventor “first-to-file” rather than the one who was “first-to-invent” – becomes effective 18 months from enactment, while a number of other changes kick in immediately. For those of us accustomed to the prior U.S. system that focused on the first person to create the invention, this will be an adjustment. It will bring us in line, however, with many international patent systems. Those in tech companies will want to make sure their engineering and other technical staff are aware of the new system on at least a general level, with the individuals responsible for IP strategy and protection becoming familiar with the details.
Read the full piece summarizing key aspects of the new act here. The full text of the bill can be found here.
The Venture Alley is a blog about business and legal issues important to entrepreneurs, startups, venture capitalists and angel investors. The Venture Alley is edited by Asher Bearman, Trent Dykes and Megan Muir, corporate and securities lawyers at DLA Piper. Contributing authors to The Venture Alley...
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