VRP Law Group, P.C.

A Boutique Business, Employment and Intellectual Property Law Firm

Archive for the ‘IP Publications’ Category

Information Technology and Intellectual Property Audits: What are they? Why do we need them? What do we need lawyers for?

Tuesday, November 11th, 2014

Information Technology (IT) and Intellectual Property (IP) Audits are more and more common place and necessary for today’s trusted advisers and professionals. The more effort you take to make sure that you protect your client’s confidentiality, intellectual property, personal information, banking information, tax information, business strategy and marketing plans, is protected the better of you will be. VRP Law Group’s IT Audits consist of the following: 1) Review of your Technology Service Agreements; 2) Reviewing and Identifying Gaps if any, in any ISP or network security settings; 3) Making sure that there is an immediate and prompt investigation that identifies vulnerabilities, breaches in data security, documents and preserves the investigation and the evidence gathered during the investigation; 4) providing good terms of use and privacy policies for use of your client’s websites or your own website; 5) Creating good internal controls to protect extremely sensitive information, intellectual property and vital trade secrets; and 6) having effective IT communication policies, password protection means, and effective training and communication of such policies to your employees and IT vendors.

Moreover, making sure that you use trusted IT vendors and manage any change in network and internet service providers to ensure that proper security protocols and change management procedures are followed by your employees, your current and future trusted vendors. Without having someone like VRP Law Group that can oversee the process and/or identify the gaps, vulnerabilities, and coordinate an effective investigation and response the change management procedures may be ineffective in addressing data security issues. These data security issues can lead to liabilities for identity fraud or theft, breach of client’s confidentiality, misappropriation of your trade secrets, vital research and development memos, confidential consulting opinions, freedom to operate opinions, willful infringement opinions, patentability analysis, prior art search analysis, fraud upon the USPTO, US Copyright or Trademark Office, or many sometimes unforeseeable problems, until a lawsuit is filed.

Empowering yourself, your employees to deal with these problems without the worry of irrational fears and implementing the necessary change management procedures is a challenging endeavor. VRP Law Group is here to help you see and identify the foreseeable and legitimate risks without heading down the wrong path or becoming an individual that is unable to see anything, but impending doom in terms of managing its assets, confidential information, intellectual property and other vital competitive advantages that may be a lure for any hacker. Using our IT and IP audits will enable you to make sure that you work closely with experienced technology counsel, cyber Law, data privacy law, and intellectual property counsel. This is always a team endeavor to make sure that you focus your clients, entrepreneurs, small or large companies’ resources on the right breach or vulnerabilities to document and preserve the corrective measures and ensure that future or repeated incidents are minimized.

Your clients and you will sleep a bit easier at night with having VRP Law Group’s IT and IP Audit professionals looking after you, your clients, your intellectual property, your change management procedures, and related information technology matters. For more go to: www.vrplawgroup.com, www.bipeblawg.com, www.eebrunchclub.com

Joint Cross Licensing of Patents and other IP, does it make sense for you?

Sunday, February 2nd, 2014

In a world where patents can protect against litigation, the big names in technology are competing against each other to secure them instead of working together to create new products. This week, however, Samsung and Google announced that they signed a global patent licensing agreement. This agreement is beneficial to both parties, as Samsung currently uses Google’s Android operating system on its smart phones. This deal covers all existing patents and any that will be filed within the next ten years.

Thus, anything Google and Samsung develop in the next decade can be used by the other. This may make sense for companies with interdependent products, but it is not right for everyone. Otherwise, you may lose a large customer and create a competitor that is able to leverage your patents with its R&D and outpace you to the market.

However, representatives from Google and Samsung discussed how this agreement has the potential to be influential – it shows others that innovation can flourish when companies work together and cooperate rather than enter into litigation. This is particularly important today, as the number of patent lawsuits that have been filed has increased substantially. In fact, Samsung is currently involved in another lawsuit with Apple. Apple wants Samsung to stop selling some of its smart phones and tablets, as they are in direct competition with Apple’s iPhones and iPads. Google, too, has been involved in suits with Apple.

While Samsung cannot claim ownership of Google’s patents to help in its dispute with Apple, it has definitely secured an ally. Further, Samsung and Google now have access to each other’s patent portfolios, which will help them to collaborate and develop new ideas. Other companies in the industry may look to this agreement as an example, and consider making similar ones, as everyone benefits from these relationships. However, this may not be the right approach for your company.

Of Course, if you are working jointly on projects, then it may make sense for you.

Defense of infringement claims, preliminary or permanent injunction proceedings and keeping your clients in business!

Sunday, January 19th, 2014

Unclean hands is often, overlooked and not asserted by any Defendant that is sued for a preliminary or permanent injunction. If you can get the Court to find that the Plaintiff has acted with Unclean Hands, then the Defendant may be able to tip the balance of equities interests in its favor. But, this doctrine can also be combined with unfair competition or deceptive trade practices to ensure that the Defendant has some counterclaims for negotiating leverage.

The Defendant must establish that the Plaintiff has acted to prevent the Defendant from engaging in competition for a product or service that it offers or is related to the Plaintiff or its affiliated companies. An overly aggressive intellectual property enforcement or policing policy can lead to IP misuse or anti-tying violations. However, these doctrines and claims can be made whether you are subject to a copyright, patent or trademark infringement suit.

Both of these defenses and the facts and circumstances that support them may also support unfair competition and deceptive trade practices claims. In addition, the consumer protection act of each state and the Federal Trade Commission’s regulations should be reviewed and incorporated into your discovery, evidence preservation, litigation, negotiation and settlement strategy, early, on in the Lawsuit.

So, why is this important? It will allow the Defendant to avoid an early temporary or preliminary injunction being entered against it. This can be the difference between the Defendant being able to generate revenues that can be used to fund its defense of the Lawsuit. Moreover, often this can be the difference between getting a settlement on your terms and continuing to operate the business, or being driven out of the market.

Making sure your litigation attorney understands the implications of the Unclean Hands, the unfair competition, IP misuse and anti-tying doctines can be the difference between staying in business and having to close your doors.

Of course, if you have any concerns or questions, then please contact us at: www.vrplawgroup.com

Understanding TTAB Proceedings and the Use of a Trademark Registration and Applications With the USPTO!

Wednesday, January 1st, 2014

Many trademark professionals do not understand the value of a presumption of validity and first use of a trademark. However, this presumption can mean the difference between winning or losing a summary judgment motion, a trademark opposition or cancelation proceedings. Unfortunately, the trademark trials board procedures must be compiled with to enable a trademark owner to have the board to consider your application, its prosecution history, and the certificate of registration.

In order to have the TTAB consider the application, its prosecution history or registration, a party must use a notice of reliance, a certified copy of the registration. Otherwise, the dates of use will not be considered competent evidence of use of a trademark. Although the application or registration at issue is automatically part of the record that the TTAB can consider, the dates of use are not always competent evidence of use of the trademark.

However, you must comply with TTAB Manual Section 704 to have the dates of use qualify, as competent evidence of use of a mark. This rule is similar to the federal rules of evidence relating to authentication and foundation (901, 902 and 903). Once, this preliminary, requirement is met, the dates of use of the mark can be used to establish priority, first use, and establish trademark or servicemark rights.

Working with an attorney with experience with TTAB proceedings will enable to protect your brand and enforce your trademark or servicemark rights. If you have any concerns or questions about protecting your trademark portfolio, then please contact us.

Drafting Patent claims and the impact of Patent Prosecution Strategy on Patent Litigation and Claim Construction!

Saturday, September 21st, 2013

A poorly drafted and incorrect claim can lead to concerns about limited or narrow protection of your patent or invalidity of a broader claim interpretation that would establish infringement of your Patent. In drafting patent claims, it is important for you to understand how your claims will be interpreted and whether they will cover your current and future competitor’s activities. Unfortunately, in litigation of patents often times prosecution strategies and the lack of foresight of a patentee can lead to a losing patent litigation strategy and inability of establishing infringement of the claims in the patents.

Working with patent attorneys that understand both litigation and prosecution strategies is often more important than the cost savings of working with an attorney or law firm that only focuses on patent prosecution or litigation. As demonstrated, in a recent decision by the Federal Circuit Court of Appeals Dow Agrosciences LLC was granted summary judgment of non-infringement. In the case of Bayer Cropscience AG v. Dow Agrosciences LLC, Circuit Judge Taranto states, “All we need and do say is that, because we do not accept the only claim construction under which Bayer has alleged patent infringement, we affirm the summary judgment of non-infringement.”

The patent in suit concerns genetically modifying plants in order to confer resistance to a commonly used herbicide called 2, 4-dichlororphenoxyacetic acid or “2-4-D”. The inventors of the ‘401 Patent were the first “to isolate, to clone, and to characterize” a gene that had that property, a gene from the soil bacterium strain Alcaligenes eutrophus JMP134. 401’ Patent, col. 1, lines 41-61.

The Inventors did not fully understand the enzymatic reaction that they were studying. In turn Bayer relied on an unverified belief about its enzymes chemical structure. While the application was still pending scientists concluded that referring to Bayer’s enzyme as a monooxygenase was incorrect. In fact, the enzyme that Bayer had actually discovered was a dioxygenase. Dow AgroSciences produces a line of genetically modified seeds that are resistant to 2, 4-D, and its enzyme is a dioxygenase.

Bayer accused Dow of patent infringement arguing that it should fall within a broader claim independent claim 1 of the ‘401 Patent. Bayer’s position is that the quoted phrase covers any enzyme that triggers cleaving of the side chain of 2,4-D to produce 2,4-DCP, even if it is a dioxygenase and even if, it does not share other biological activities of the particular enzyme whose gene Bayer sequenced.

The District Court ruled that claim 1 if construed as Bayer stated would “fail to satisfy the written description requirement of 35 U.S.C 112” because disclosing one gene and the test used to find it was not enough to capture the large genus of oxygenases and cover both Mono and dioxygenases that Bayer alleged to have claimed. Bayer CropScience AG v. Dow AgroSciences LLC, Civ No. 10-1045 RMB/JS, 2012 WL 4498527 (D. Del. Sept. 27 2012)

The Federal Circuit identified two key problems with Bayer’s asserted claim construction of independent claim 1: Aspects of textual analysis of claim 1 and the written description strongly contradicts Bayer’s asserted genus claim to all oxygenases; and (B) Bayer’s construction of independent claim 1 was so broad as to raise serious doubts about validity of the claim and full enablement and complete disclosures of a supported claim in the written description. Bottom line as Judge Taranto states, “Bayer chose the language based on an unverified belief that it accurately described its enzyme, learned that the belief was false while its application was pending, had seven years before its patent issued to alter the language, but never did.”

In other words, a Genus claim cannot be asserted where the Inventor does not know or misstates the chemical structure of the compound it claims. An error in identifying the chemical structure of a compound or enzyme does not disclose all the different types of oxygenases or chemical compounds that may be variants of a particular enzyme discovered by the Inventor. If Bayer had corrected and amended either claim 1 or its disclosure to correctly state that the enzyme it discovered was dioxygenase, but that monoxygenases or other variants would yield the same genetically modified seeds that were similarly resistant to the 2,4-D herbicide, then the case may have turned out differently.

However, without actually indicating in the written description, the claim language, the inventor’s affidavit or oath, the drawings or the knowledge of a person of ordinary skill in the art that Bayer’s enzyme would functionally produce the same or similarly modified seeds, if either, a mono or dioxygenase was used. Without some indication of being able to use either, Mono or Dioxygenase versions of the enzyme there is no basis for Bayer to have claimed, invented or disclosed the proper characteristic of its enzyme or a genus claim to all class or species of oxygenases of Bayer’s enzyme that would yield the modified and 2, 4-D resistant seeds.

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