Why You Have That Employment Agreement Gobbledygook

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.

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MacCord’s List: IP Notices & News From Art MacCord

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

https://www.uspto.gov/about-us/news-updates/us-joint-strategic-plan-intellectual-property-enforcement-announced

Correction To Proposed Amendment To the Rules of Practice Before the Trademark Trial and Appeal Board (TTAB)

https://www.uspto.gov/sites/default/files/documents/81%20FR%2089382.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_
name=&utm_source=govdelivery&utm_term

Copyright 2016 North Carolina Bar Association.

MacCord’s List: IP Notices & News From Art MacCord

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
https://www.copyright.gov/dmca-directory/

How Well Does Your Company Keep Secrets?

snyder-steven-3252By 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.

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File Early: How Provisional Patent Applications Increase Protection

dan-beckerBy Daniel Becker

Many applicants make the mistake of waiting until they have an ideal embodiment reduced to a high degree of precision before drafting a patent application. While skillful application drafting is important to the value of the patent, it is a mistake to presume that one should wait to file until the invention is crafted to a state of perfection.

The value to the public of a granted patent is a fulsome disclosure that advances the state of the art. Patent protection effected by the application extends to the degree that the applicant’s claims are adequately supported by that disclosure. The requirement that the disclosure must be at least as much as is claimed seems logical with respect to the benefit of the patent to the public. However, for the applicant, it creates an inverse relationship between depth of disclosure and breadth of protection.

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The Chair’s Comments: Welcome to a New Year and a New Blog

fruth-darrellBy Darrell A. Fruth

Please allow me to introduce myself as chair of the IP Section, along with our new blog format.  We will use this blog to share articles and keep you posted on networking events and other programs that we are planning for the year.  If I can get you to do one thing, please mark April 28, 2017 on your calendar when you (and hopefully your family) will be attending our annual section meeting in Wilmington!

About Me   

It suits me to write my first Chair’s Comments in the form of a blog post, as I prefer less formal modes of communication. I spent my formative years in Las Vegas and then studied engineering at MIT and UC Berkeley before attending Yale for law school.  After law school, I clerked for a federal judge in Reno, NV, the “Biggest Little City in the World,” and practiced patent litigation in San Francisco.  I also took full advantage of the outdoor adventures, such as downhill skiing and mountain biking, that abound in the Sierras.  My family moved to Durham in 2005.  I currently serve as a partner at Brooks Pierce in Raleigh, where my broad IP practice includes licensing, assertion, and white collar defense.  I also co-teach the Start-Up Ventures Clinic at Duke Law School.

This Blog

With the support of section leadership, our intrepid editors Lauren Anderson and Michael Morlock decided to embrace the 21st century: We have switched our IP Links newsletter into a blog available to the entire world.  This should allow more timely stories delivered in shorter bites, but only if section members generate and share content relevant to our section.

The Year Ahead

Our section has strong leadership in the form of capable officers and dedicated committee chairs.  The trademark committee just conducted a seminar about beer law in Asheville.  Expect similar, top-notch programs throughout the year.  The cornerstone annual CLE will be presented, in collaboration with the Sports and Entertainment Section, in Wilmington on April 28.  We need you there.  Unless we have good attendance, the Bar Association will encourage us to hold all of our annual meetings at the Bar Center in Cary.  More importantly, our section sees real value in spending time getting to know one another.  In addition to CLE options, our events will stand out as a way to connect with your colleagues across the state.

I look forward to seeing you at an IP Section event soon!