President Barack Obama on Wednesday signed the Defend Trade Secrets Act of 2016 ("DTSA") into law, creating a federal system of trade secrets law. The DTSA extends the current Economic Espionage Act of 1996 ("EEA") which criminalizes trade secret theft, and creates a new Federal cause of action allowing companies to sue to defend their trade secrets. This means that for the first time, trade secret owners can now bring civil suits in federal district courts. The bill was largely uncontroversial passing the Senate 87-0 and the House of Representatives 410-2.

Under the DTSA, for example, a federal court could have jurisdiction over a claim of misappropriation of a trade secret that is used exclusively on an internal basis by the victim or one that is related to a product or service that is in the development stage, so long as the trade secret is related to a product that is intended for use in interstate commerce.

The DTSA adopts the EEA's broad definition of a trade secret meaning almost any kind of tangible or intangible type of information can qualify as a trade secret so long as: (1) the information is actually kept secret; (2) the owner took reasonable measures to maintain that secrecy; and (3) independent economic value is derived from that secrecy.

The theft of trade secrets costs the economy more than $300 billion a year, according to the Commission on the Theft of American Intellectual Property. The DTSA represents the most significant expansion of Federal intellectual property law in a generation, fully recognizing a fourth type of intellectual property right, and is a major step forward in the protection of intellectual property in the United States. 

In Petrella v. Metro-Goldwyn-Mayer, the "Raging Bull" case, the Supreme Court of the United States held that the defense of laches, whereby the accused infringer alleges that the right holder sat on its rights for too long before bringing suit, cannot be used to shorten the three-year statute of limitations set forth in the Copyright Act. In the case of SCA Hygeiene Products, AK v. First Quality Baby Products, LLC, the Supreme Court has recently taken up the question as it pertains to the defense of laches and the six-year statute of limitations set forth in the Patent Laws. Follow the case here for updates. 

Thursday, 05 May 2016 16:53

US PTO Issues 2016 Guidance on Patent Eligibility

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Yesterday, the USPTO issued the most recent guidelines of patent subject matter eligibility pursuant to 35 U.S.C. 101, i.e. the detemrination of when an invention will be found ineligible for an "abstract idea", "law of nature", or "natural phenomenon".  This update follows the two preceding updates each from July 2015, and late 2014 (after the Alice decision).  Specifically, the new memorandum issued by the Deputy Commissioner now requires that an examiner: (1) identify the judicial exception by referring what is recited in the claim and explain why it is considered an exception; (2) identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and (3) explain the reason(s) that the additional elements taken individually, and as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception.  Overall, this appears to be an increased burden on the examiner in formulating an initial 101 rejection.  Additional examples and recent court decisions have also been provided.  For more, visit http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.

Wednesday, 27 April 2016 22:21

House Passes Federal Trade Secrets Bill

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The U.S. House of Representatives passed legislation that would allow companies to sue in federal court for damages resulting from theft of trade secrets. The House voted 410-2 to pass the “Defend Trade Secrets Act,” which passed the Senate earlier this month 87-0. The bill next heads to President Obama, who is expected to sign it into law.

Although trade theft is already a federal crime, under current law cases must be lodged by prosecutors and private civil cases must be filed under state law. The Federal Trade Secrets Bill would create a uniform federal standard for trade secret misappropriation and protect against the economic harms created by trade secret theft, providing an additional civil remedy beyond the patchwork of state statutes. 

As many fans remember the legendary artist Prince, they will discover that the task of finding his extensive musical catalog online is nearly impossible. In today's digital age dominated by music streaming services, many will be surprised to find a total lack of Prince's music on many of the top streaming services such as Spotify, Rhapsody and Apple Music.

In the 1990's Prince was involved in several legal disputes. It is well documented that he changed his name to an unpronounceable symbol in the 1990's during a contractual battle with his record label Warner Bros. After fulfilling his contract, reclaiming his name, and striking a landmark deal in 2014 to reclaim control over his back catalog, Prince intensified his attacks on those he felt were infringing on his music copyrights. In recent years, he had been involved in legal disputes with Facebook and YouTube users providing links to 'bootleg versions' of his music and he had refused to release his music on several of the biggest streaming services, because he claimed those services took advantage of the artists.

Prince's catalog can only be found online on a small number of platforms like Pandora and SiriusXM, which rely on compulsory licenses to perform music. The question now, is whether his music will see a wider release in the wake of his untimely death. Soon, the prolific artist's catalog could become more widely available on streaming services. The decision to release Prince's music more widely online, will depend on whoever is in charge of the administration of his estate and whether Prince had any provisions in his will regarding how his intellectual property may be used in the future. At this time this remains unknown.

The National Archives reports that the original patent documents for the Wright brothers' Flying Machine surfaced recently after having been mis-filed in 1979. The document was recovered after a targeted search of more than 269 Million documents maintained by the Archives. The discovery is timely, as the documents were due to be displayed next month during the 110th anniversary of the patent grant date. U.S. Patent No. 821,393 was filed in March of 1903, several months before the historic flight, which would have been good advice from the brothers' patent attorney. 

A U.S. District Court Judge in California, ruled there is enough evidence to move forward with a trial to decide whether Led Zeppelin and guitarist Jimmy Page unfairly appropriated the iconic opening guitar “riff” in “Stairway to Heaven,” from the Spirit song “Taurus,” which was recorded four years before the Led Zeppelin classic was released. The plaintiff alleges that members of Led Zeppelin, had opportunities to become familiar with Spirit’s music before the release of “Stairway to Heaven,” because the two bands “performed at the same venue on the same day at least three times between 1968 and 1970.”

The lawsuit, which was filed in a Philadelphia court back in 2014, was moved to California, to the same court that recently ruled in favor of the estate of Marvin Gaye in its copyright infringement lawsuit over the song “Blurred Lines” in 2013.

The trial over “Stairway to Heaven” is set to begin on May 10. A favorable verdict, could bring the plaintiff, the estate of Randy Wolfe, co-writing credits and a share of the song’s profits which by 2008, were reportedly in the range of $562 million.

This is not the first time Led Zeppelin has been accused of copyright infringement. A lawsuit was filed and subsequently dismissed, at the plaintiff’s request in 2012, over the recording “Dazed and Confused.” 

Today, the US PTO issued revisions to the Rules of Procedure for the Patent Trial and Appeal Board, at 81 Fed. Reg. 18750.  This Federal Register Notice includes various changes to the duty of candor, the rules on pleading page limits, as well as grounds for instituting IPR and PGR proceedings. 

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