Every day, companies unknowingly give up intellectual property and trade secrets which they could have otherwise protected with simple processes. Poor R&D policies may not capture patent rights on a company invention. A faulty or simply outdated employment agreement may not protect a customer list used by an employee who leaves for a competitor. These pitfalls are easily avoidable by implementing measures on the front end and educating employees on the basics of intangible property and how to protect it.

In this webinar, Seyfarth IP and trade secret attorneys provided a basic overview of what types of intellectual property and trade secrets are protectable, how to protect them, and helpful tips to ensure that a company is doing everything they can to avoid common issues associated with intangible property.

As a conclusion to this well-received webinar, we compiled a summary of three takeaways that were discussed during the webinar:

  • Businesses routinely miss out on opportunities to protect their valuable intellectual property simply because they do not realize that their inventions or developments qualified as intellectual property in the first place. Particularly in light of changes in patent law that reward the first party to file for a patent – regardless of whether they invented something first or not – it is important to be proactive about applying for patent protection as early as possible. If a business believes that an invention may qualify for either a design or utility patent, it should take steps to start the patent application process as soon as possible.
  • Copyright and trademark protection are also an important, and often overlooked, component of intellectual property protection. Trademarks are routinely granted for patterns, brands, logos, trade dress, and other identifying images which businesses may have thought were too generic to qualify for such protection. Copyrights are also becoming an increasingly important tool in protecting computer code.
  • Trade secrets are also intellectual property, but are governed by an entirely different set of laws and are protected in different ways, often through litigation. Because the recently-enacted Defend Trade Secrets Act of 2016 requires the owner of trade secrets to have taken reasonable steps to protect that information, businesses should identify their processes for identifying what information qualifies as a trade secret and what steps they have taken to protect that information, including the implementation of employee confidentiality agreements. Confidentiality agreements drafted before 2016 need to be updated to include certain whistleblower language as a result of the passage of the Defend Trade Secrets Act.

shutterstock_330853187It is well known that 18 U.S.C. § 1836, et seq. (the Defend Trade Secrets Act or “DTSA”) finally provides a mechanism for pursing trade secret claims in federal court. A recent decision, however, serves as an excellent reminder that failure to establish personal jurisdiction over a defendant will nevertheless result in dismissal of your DTSA claim—and potentially your entire case. So, before you rush off and file that DTSA claim in your local federal court, carefully consider if it’s really the right court after all.

In Gold Medal Products Co. v. Bell Flavors and Fragrances, Inc., 1:16-CV-00365, 2017 WL 1365798 (S.D. Ohio Apr. 14, 2017), the plaintiff filed suit in the U.S.D.C. for Southern District of Ohio against its former employee, William Sunderhaus, and his new employer, Bell Flavors, alleging misappropriation of trade secrets and confidential information. As part of its lawsuit, Plaintiff asserted a DTSA claim, which Defendants moved to dismiss for lack of personal jurisdiction. Continue Reading Don’t Forget to Establish Personal Jurisdiction in Defend Trade Secrets Act Cases

shutterstock_394537450A lawyer’s favorite phrase might be “it depends.” And when an employer asks whether its customer lists qualify as a trade secret, “it depends” is often the answer. But even if it’s difficult to definitively state whether customer lists qualify as a trade secret, the converse—whether customer lists might not constitute a trade secret—can be helpful to assessing how much protection a court will provide.

With the advent of the Uniform Trade Secrets Act (“UTSA”), no state categorically denies trade-secrets status to customer lists. That’s because the default definition of a “trade secret” under the UTSA includes compilations of information, and several states modified the default definition to explicitly include customer lists as potential trade secrets. See, e.g., Conn Gen. Stat. § 35-51(d); O.C.G.A. § 10-1-761(4); Or. Rev. Stat. § 646.461(4); 12 Pa. Cons. Stat. Ann. § 5302. Other states opted to mention that a “listing of names, addresses, or telephone numbers” may qualify as a trade secret if the listing, like any trade secret, has independent economic value because it is not readily ascertainable and is subject to reasonable efforts to maintain its secrecy.  See, e.g., Co. Rev. Stat. Ann. § 7-74-102(4); Oh. Rev. Code Ann. § 1333.61(D).

States still, however, apply varying degrees of scrutiny before conceding that customer lists constitute a trade secret. In more skeptical jurisdictions, courts decline to confer trade-secrets status on customer lists for one of three reasons. Continue Reading Are My Customer Lists a Trade Secret?

shutterstock_584007385Seyfarth Shaw attorneys Robert Milligan, Jim McNairy, and Scott Atkinson, joined by James Vaughn of iDiscovery Solutions, are presenting a briefing in Los Angeles on May 10 and a briefing in San Francisco on May 17, focused on trade secret protections.

Trade secret identification and protection is more critical than ever for employers in California. Technology is consuming the way we do business, and new laws concerning trade secrets and the content of employment agreements with California employees makes trade secret identification and protection more critical than ever.

We invite you to join our Seyfarth attorneys along with one of California’s leading computer forensics experts in an interactive briefing designed to help California employers navigate these tricky waters and provide best practices for trade secret protection.

Topics include:

  • How to best identify and protect trade secrets
  • What employers need to know about the DTSA
  • The impact of new California Labor Code Section 925
  • Effective use of restrictive covenants in employment agreements
  • How to catch a trade secret thief
  • Responses to potential trade secret theft
  • Choosing the right court to protect trade secrets
  • Considerations for suing under the DTSA vs California law (or both)

 

Los Angeles Breakfast Briefing Details
May 10, from 8 a.m. to 10 a.m.
Seyfarth Shaw LLP
Los Angeles – Downtown
333 South Hope Street, Suite 3900
Los Angeles, CA 90071
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San Francisco Breakfast Briefing Details
May 17, from 8 a.m. to 10 a.m.
Seyfarth Shaw LLP
San Francisco
JPMorgan Chase Building
560 Mission Street, 20th Floor
San Francisco, CA 94105

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shutterstock_369954692Seyfarth Shaw, AlixPartners, and Directors Roundtable invite you to attend Cyber Risk Management Facing Boards, C-Suites & General Counsel: Prevention, Crisis Management, and Mitigating Personal Liability, a program for corporate directors, executive officers and general counsel, focused on approaches and strategies to forensic preservation of electronically stored information, as well as an expert summary of forensic technologies and methodologies used in the field.

The speakers for this program include:

The speakers will address key topics, including:

  • Cyber Attacks and Defenses
  • Governance, Compliance & Disclosure Issues
  • Potential Liability to Government and Shareholders
  • Litigation Defense and Insurance Coverage
  • Prioritizing Risk Management Dollars
  • Different Risks for Different Data Types and Industries
  • Incidence Response and Planning

The program is Wednesday, May 10 from 8 to 10:30 a.m. at The City Club of San Francisco, 155 Sansome Street.

There is no fee to attend and continental breakfast will be served. To find more information and to register, click here.

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itechlaw-logoSeyfarth Shaw LLP is pleased to be a Global Sponsor at ITechLaw’s 2017 World Technology Conference in Chicago May 3–5.

The Drake Hotel
140 East Walton Place
Chicago, IL 60611

ITechLaw is a not-for-profit organization established to inform and educate lawyers about the unique legal issues arising from the evolution, production, marketing, acquisition and use of information and communications technology.

The World Conference will feature a wide-ranging program and invaluable networking opportunities that will focus on cutting-edge legal topics, including e-commerce, e-contracting, disruptive technologies, data protection developments, and the impact of cognitive technologies in the legal spheres.

This year, Seyfarth Shaw Partner Robert B. Milligan is on ITechLaw’s Board of Directors and is the Co-Chair of the Local Representative Committee.  Seyfarth Shaw Partners Kevin Woolf and Dan Hart and Seyfarth Shaw Legal Project Manager Kyle Hoover will be leading the interactive workshop “Technology Contract-a-thon.” The workshop will take participants into the evolving process, labor and software solutions addressing the “more for less” challenge of efficiently handling technology transactions and contract management.

Please stop by our table during the conference to learn about our Intellectual Property, Corporate, Global Privacy & Security and Trade Secrets, Computer Fraud & Non-Competes Practice Groups. Chicago Partners Michael Wexler, Bob Sell, and Marcus Mintz, and Associate Kristine Argentine are scheduled to attend and participate at the conference.

For more information, click here.

 

#17-3939 BioLoquitur Blog Image for Header R2Seyfarth’s Intellectual Property Practice Group is delighted to announce the launch of BioLoquitur on LexBlog. Seyfarth’s IP-life sciences attorneys created this blog as a single resource for executives and corporate in-house counsel seeking timely updates on recent developments, trends, tools, best practices, and discussions in the area of intellectual property—patent law, particularly in the life sciences industry.

The BioLoquitur blog offers an all-inclusive assessment of the law regarding life sciences, including issues related to Hatch-Waxman litigation, patentability and patent eligibility, biosimilars, freedom to operate, patent enforcement, America Invents Act (AIA) proceedings, and patent prosecution.

Our team of bloggers have a deep understanding of the biotechnology, chemical, pharmaceutical, and nanotechnology industries. Our attorneys have handled all aspects of life sciences-related intellectual property, including patent litigation, prosecution, due diligence, counseling, and transactions. Our broad technical training, as well as years of legal experience representing clients in court before the United States Patent and Trademark Office as venture capitalists and in-house counsel, allow our attorneys to work closely with clients to not only understand but achieve their technical, business, and legal goals.

If you would like to receive our BioLoquitur blog updates via email as soon as they are published, please subscribe by clicking here.

webinarOn Thursday, April 20, at 12:00 p.m. Central, Seyfarth attorneys Patrick T. Muffo and Kevin J. Mahoney will present Simple Measures for Protecting Intellectual Property and Trade Secrets.

Every day, companies unknowingly give up intellectual property and trade secrets which they could have otherwise protected with simple processes. Poor R&D policies may not capture patent rights on a company invention. A faulty or simply outdated employment agreement may not protect a customer list used by an employee who leaves for a competitor. These pitfalls are easily avoidable by implementing measures on the front end and educating employees on the basics of intangible property and how to protect it.

In this webinar, Seyfarth IP and trade secret attorneys will provide a basic overview of what types of intellectual property and trade secrets are protectable, how to protect them, and helpful tips to ensure that a company is doing everything they can to avoid common issues associated with intangible property.

The topics covered include:

  • A discussion of what types of intangible property are protectable
  • The process for protecting intangible property
  • What is a “trade secret” and how do you protect one?
  • What steps can engineers, business people, and marketing teams take to ensure their intangible assets are protected on the front end?

Please join us for this informative webinar.

register

shutterstock_529332652Seyfarth Synopsis: An environmental remediation technologies company is in the midst of litigation in Chinese courts over a $1.2 million contract to provide its technology to a Chinese company. According to the Chinese entity, the technology provider failed to deliver the unit in a “timeframe that was agreed.”

The West Mountain Environmental Corp. (WMT) had issued a press release in October 2016 that it had sold its first indirect thermal desorption technology (TPS) unit in China to Shanghai Hehui Environmental Technology, Co. Ltd. (Hehui). WMT valued the contract at approximately $1.2 million.

Historically, WMT had operated in China since 2012 and has treated, it claims, over 100,000 tons of contaminated soil and oil sludge using TPS technology. TPS’ patented indirect thermal desorption technology is “recognized in the industry as one of the most efficient and safest technologies for the removal of hazardous contaminants.” WMT asserts that TPS was one of the first western environmental remediation technologies successfully transferred to China which has been recognized as a top 100 environmental technology in the 3iPET Program supported by the Ministry of Environmental Protection.

This sale, WMT indicated, represented the first time that TPS technology had been used as part of a process to treat waste purified terephalic acid (PTA) sludge. “PTA is required for the manufacture of polyester fibre, polyethylene terephthalate (PET) bottle resin and polyester film and China is the largest producer of PTA at over 50 million tonnes per year.”

Now according to a recent WMT press release, it received notice that a lawsuit had been filed against it by Hehui, claiming that WMT failed to deliver the TPS unit in a “timeframe that was agreed.” As a consequence, a Chinese Court ordered that WMT’s bank accounts be frozen until a hearing is held on March 27, 2017 in Shanghai.

Subsequently WMT was informed by its Chinese legal counsel that its motion to remand its contract dispute with Hehui to arbitration in conformance with the terms of the contract between the parties was denied. The release indicated that Chinese Intermediate Court ruled that as the contract between the parties did not specify an arbitrator, so the Intermediate Court would hear the case. As a result of the ruling and based on the recommendation from Chinese legal counsel, WMT will file an objection of jurisdiction to the Intermediate Court on April 5, 2017, at which time an official hearing for the case will be set.

This case illustrates how very careful parties need to be in preparing contracts, especially in international cases. Deals in China may be especially complicated as the law varies in different provinces.

For more information on this or any related topic please contact the authors, your Seyfarth attorney, or any member of the International Employment Law Team, the Intellectual Property, or the Trade Secrets Teams

shutterstock_210713560Since July 1, 2001, Missouri law with respect to non-solicitation clauses has been fairly straightforward.  Specifically, § 431.202 of the Missouri Statutes states that a covenant not to solicit between an employer and an employee is presumed reasonable if it is no longer than one year in duration and designed to protect confidential information, customer relationships, and/or good will. Section 431.202 also states that the statute does not apply to covenants not to compete, thereby allowing the courts to decide the enforceability of a non-competition clause on a “case-by-case” basis.  (Id. § 3).

A Bill, however, currently pending in the Missouri House of Representatives seeks to abolish Missouri’s non-solicit statute and ban all restrictive covenants except for those restrictive covenants found in a “business to business” setting.  Specifically, House Bill 479, introduced by Representative Keith Frederick (R), seeks to eliminate all types of restrictive covenants (non-compete, non-solicit, and non-hire) except when the restrictive covenants involve the sale of a business or are between two corporations engaged in a joint venture. The Bill would go into effect August 28, 2017.  Thus, any restrictive covenant agreement between an employer and an employee that is a) controlled by Missouri law and b) entered into after August 28, 2017 would be unenforceable.

In addition to House Bill 479, a recent Federal Court decision in the Eastern District of Missouri also has the attention of non-compete lawyers. In Durrell v. Tech Electronics, Inc., plaintiff Robert Durrell brought suit against his former employer, Tech Electronics, Inc., alleging that he was wrongfully terminated and retaliated against for taking FMLA leave. Durrell’s Complaint further alleges that the restrictive covenants found in his Employment Agreement are unenforceable due to a lack of consideration. The Court denied Tech’s Motion to Dismiss Durrell’s restrictive covenant claims by ruling that at-will employment is “not a source of consideration under Missouri contract law.” Notably, the Court did not address § 431.202’s specific language that a non-solicitation clause is enforceable if it protects confidential information, customer relationships, and/or good will. In fact, the Court does not even mention § 431.202 in its opinion. (Probably because the Court was only asked to address whether “at-will employment” is sufficient consideration for enforcing a restrictive covenant).

We will continue to monitor House Bill 479 (the Bill is currently in “Executive Session”) as well as the Durrell case, and will provide all relevant updates on this blog.