Intellectual Property Law Section members:
The Intellectual Property Law Section of the North Carolina Bar Association is seeking nominations for its 2016 Outstanding Achievement Pro Bono Award. This award is intended to foster and recognize the outstanding pro bono efforts undertaken by IP Section members during the year of 2016. Please take a few moments to nominate yourself or another IP Section member (including law firms and other organizations such as in-house legal departments) and summarize the qualifying pro bono activities performed by the candidate during the past year. Thank you in advance for your nominations and for your encouragement of the pro bono efforts of the IP Section’s members.
By Daniel Walker Cole
Suppose you are a small company in California asserting a patent against a North Carolina-based company. You gathered finances, hired a lawyer, and filed a complaint. Now you are ready to start litigating your patent infringement case, but you receive a summons for violating NC 75 Article 8. This may seem utterly fantastical, but under North Carolina’s anti “patent troll” legislation it is not.
Next to issues surrounding 35 USC section 101, the supposed abusive litigation by “patent trolls” is one of the most discussed issues in patent law. North Carolina, along with several other states, has enacted laws aimed at curbing this practice. The law, however, suffers from several potential pitfalls. It gives North Carolina courts personal jurisdiction over anyone who sues a North Carolina based entity for patent infringement, even if the patent infringement suit takes place in another state. Lack of contacts, other than serving a North Carolina based entity, are irrelevant. Accordingly, a discussion on the likelihood of federal preemption follows.
By Jonathan Bogues
As attorneys, we are all well aware of how diverse the practice of law is and how each area of the law intersects with other areas. However, not many non-attorneys are aware of the intersection between intellectual property law and sports and entertainment law.
Like many other children of the nineties, I grew up idolizing basketball megastar Michael Jordan. As a kid growing up on Tobacco Road, I was in awe of Michael Jordan’s seemingly unlimited skill set. So you can imagine many children’s collective disappointment when our hero was not in several video games growing up. The National Basketball Association (NBA) and the National Basketball Players’ Association Shared Licensing Agreement is one reason for that.
By Pamela Chestek
Plaintiff Advanced Video Technologies has been around the block a few times already. AVT claimed to be the successor to a patent for a video codec. It had successfully asserted the patent against other defendants but ran into some problems when trying to sue HTC Corp., Blackberry and Motorola Mobility. Its first attempt failed because there was a missing link in the chain of title, meaning AVT didn’t actually own the patent. AVT didn’t appeal but instead had a receiver appointed for the sole purpose of transferring the ownership of the patent. The receiver assigned the patent to AVT and AVT started over again with HTC, Blackberry and Motorola Mobility.
Just a cast of characters first, there are many players to keep straight:
- Infochips was the original employer of the inventors but it went out of business before the patent application was filed;
- Woo was an inventor who bought the Infochip assets;
- Woo assigned the assets to AVC, a predecessor to plaintiff AVT (“C” is before “T” in the alphabet, just keep that in mind when reading).
- Epogy was the entity that supposedly owned the patent but didn’t, thus breaking the chain of title the first time around.
It’s actually more complicated than that, but that’s enough for our purposes.
By Art MacCord
Art MacCord is a patent attorney with 38 years of experience. He keeps an eye on the U.S. Patent and Trademark Office and the U.S. Copyright Office for new rules and practice tips of interest to intellectual property attorneys. Please find his most recent links here.
U.S. Joint Strategic Plan On Intellectual Property Enforcement Announced
Correction To Proposed Amendment To the Rules of Practice Before the Trademark Trial and Appeal Board (TTAB)
Copyright 2016 North Carolina Bar Association.
By Art MacCord
Art MacCord is a patent attorney with 38 years of experience. He keeps an eye on the U.S. Patent and Trademark Office and the U.S. Copyright Office for new rules and practice tips of interest to intellectual property attorneys. Please find his most recent links below.
Service Provider Designation of Agent to Receive Notifications of Claimed Copyright Infringement
By Steven Snyder
Most of us have seen the headlines over the past couple years about massive data breaches affecting millions of people. We have all likely received at least one letter notifying us that our confidential information may have been implicated in one of these breaches. The reason for this is that most states have breach notification laws that require a company to notify individuals if the company has reason to believe that certain types of personal identifying information has been taken by a third party. While businesses of all sizes would do well to carefully consider their approach to securing such information, an additional important consideration is the protection of the trade secrets that represent the lifeblood of many companies.
Trade secrets come in many forms such as research and development, business strategy, market research, and client lists. Many of these trade secrets comprise the foundation of companies and provide the differentiators that give them an edge over their competitors. Yet many of the trade secrets do not implicate the types of personal identifying information that trigger notice requirements. For example, North Carolina requires businesses to notify people of a breach involving their personal identifying information, which includes data such as a social security number, driver’s license number, and financial account information. North Carolina’s law is consistent with the approach taken by most states and federal agencies in that its notice provisions relate primarily to concerns of individual financial harm.