Filed under: CLE Events , News | 8 April, 2013 by PBurrus

On Wednesday, April 24, 2013, from 11:45 to 1:00 p.m., the Licensing Committee held a lunch and learn entitled, “Beating the World to Better Deals . . How better due diligence leads to better licensing deals.”

The event was held at the State Bar Conference Center, Third Floor, Room A, 104 Marietta St. NW, Atlanta, GA 30303. The Atlanta Chapter of the Licensing Executives Society co-sponsored the event. One hour of CLE credit was provided.

The speakers were Ed Carreras of Woodcock Washburn and Barry Brager of Perception Partners. The joint presentation represented both client and counsel perspectives regarding areas where IP research is necessary and desirable in IP licenses. The topics covered included: 1) identifying global technologies to license, 2) identifying potential global licensing partners, 3) Identifying competing technologies, 4) Assessing IP strength, and 5) Assessing Third Party risk.

Ed Carreras is the former Chief IP Counsel at Coca-Cola. He now focuses his practice on IP licensing and transactions, development agreements, and IP business strategies. During his tenure, Ed has handled issues in many technical areas and has extensive global business experience. He has been at the center of transactions involving virtually every region of the world, providing him with hands-on understanding of the issues a company may face in Asia, Europe, Latin America and elsewhere.

Barry Brager is recognized as a leader in the IP industry. As founder of Perception Partners, he has been recognized as one of the world’s Leading IP Strategists as published by IAM Magazine. He’s served as Small Business Committee Chair of the IP Owners Assoc. and co-chaired the Licensing Executives Society Annual Meeting. He’s contributed to the Strategic Planning Committee of the Patent Information Users Group. Barry is a frequent speaker on IP strategy, valuation and the links between patent intelligence and competitive advantage.

Filed under: News , Philanthropy | 8 April, 2013 by PBurrus

The Philanthropy Committee hosted its third event at the Atlanta Community Food Bank on Saturday, April 6, 2013, from 1-4PM. Committee members volunteered at the Product Rescue Center (PRC).  The PRC provides quality grocery items including non-perishable goods such as canned and packaged products as well as perishable goods such as frozen/refrigerated items and also health and beauty items to over 600 non-profit partner agencies in metro Atlanta and the North Georgia area.  These partner agencies, in turn, distribute these products to individuals and families in need.  Volunteers make this possible by sorting, inspecting and packing donated items for these groups.  

I would like to thank IP Section Members Ben Saidman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and Rhonda Sadler of the City of Atlanta for coming out to the event. It was a great way to start spring by helping out in the local community. While our numbers were few, we had a great time and made a big impact. Our shift sorted and packaged 7678 lbs of goods, which translates into 5118 meals! The PRC certainly makes volunteering fun and we will definitely return. If you would like to volunteer, please reach out to volunteers@acfb.org to confirm your spot.

Chris Curfman,

Philanthropy Committee Chair

Filed under: CLE Events , Copyright , News | 3 April, 2013 by PBurrus

On April 29, 2013, from 12:00 p.m. to 1:45 p.m., the Copyright Committee held a lunch and learn event entitled, “Copyright, the Internet, and the Rule of Law. The event was held at the law offices of Kilpatrick Townsend in mid-town. The event was co-sponsored by the Copyright Society of the United States. One hour of CLE credit was provided.

The speaker was Andrew Bridges of Fenwick and West. Mr. Bridges stated that critics have described the Internet as a lawless place, the “Wild West,” which needs to be governed by the rule of law. He suggested that many of these critics are major copyright interests who argue that the rule of law needs implementation through restrictions in computing technologies and consumer devices. He then discussed that argument, as well as the rule of law as applied to the current copyright law environment. He argued that, while numerous laws have targeted the Internet and consumer devices over the last two decades, the U.S. Government’s copyright law policy itself undermines the rule of law. He discussed how five different aspects of copyright law and policy compare to principles of the rule of law: (1) the treaty and trade agreement process, (2) the legislative process, (3) criminal enforcement, (4) civil enforcement, and (5) “voluntary cooperation” initiatives spearheaded by the U.S. Intellectual Property Enforcement Coordinator.

Mr. Bridges, a native of Atlanta and a former law clerk to U.S. District Judge Marvin H. Shoob, practices law at Fenwick & West LLP in San Francisco and Silicon Valley. He has represented pioneers in technology and Internet businesses for over 20 years. Among other matters, he defended the distributor of the first MP3 player against the recording industry’s effort to ban it (RIAA v. Diamond Multimedia); defended Google over its search engine (Perfect 10 v. Google/Amazon.com); defended MasterCard when challenged over its payment processing for allegedly infringing web sites (Perfect 10 v. Visa and MasterCard); represented eBay, Facebook, IAC/InterActiveCorp, and Yahoo! in their amicus brief before the Second Circuit in Viacom v. YouTube; recovered the dajaz1.com domain after its seizure and secret detention by Homeland Security; and represented UK college student Richard O’Dwyer in resisting extradition to the US and prosecution for operating a U.K.-based website that linked to other sites offering streams of television shows. He was active in the fight against the SOPA and PIPA legislation, and he advocates for technology, Internet, and free speech interests in international arenas.

Filed under: News , Uncategorized | 28 March, 2013 by PBurrus

The Industry Outreach Committee is a new committee introduced this year with the task of promoting the Georgia Intellectual Property Bar to Industry in Georgia. Under the lead of Jim Johnson, the Committee has been preparing materials suitable for distribution to various industry groups. Below is the Committee’s Top Ten List for Small Business People.

TOP TEN THINGS SMALL BUSINESS PEOPLE SHOULD KNOW ABOUT INTELLECTUAL PROPERTY

INDUSTRY OUTREACH COMMITTEE

IP Section State Bar of Georgia

Jim Johnson, Chairman

1.  What is Intellectual Property (IP)?

Generally speaking, IP is property created by the mind, but receives legal protection similar to personal property. United States law (and the law of most other countries) recognizes trademarks, copyrights, trade secrets, and patents as protectable intellectual property.

2.  IP is, in all likelihood, one of your company’s major assets.

IP can protect your brand, your innovation, and your business practices. The IP a company owns can be a significant portion of its assets, as well as its value. This is especially true for companies focusing on innovation when in the start-up phase. Thus, a company needs to understand how not only to protect its IP, but also to leverage its IP to achieve a return on its research and development investment.

3.  IP is important for protection both from an offensive and defensive standpoint.

Offensively, a company can use its IP to keep competitors from using its innovations. IP can also be used to prevent other companies from “riding the coat tails” of a company that has worked to build a reputation for delivering exceptional products and services. Defensively, dealing with assertions such as cease and desist letters or lawsuits can not only be expensive, but can erode the value of a company’s IP as well. Care must be taken to ensure a company does not infringe the rights of others, especially when its IP is included in licensing, employment, financing, supply chain, joint venture, and M&A agreements.

4.  Trademark rights can be a company’s most important asset, so choose wisely.

Trademarks (which can be logos, slogans, colors, sounds, etc.) and Trade Names (product name brands) help consumers to distinguish a company’s products from those of its competitors. Trademarks and Trade Names  allow a business to benefit from the goodwill and reputation that its products or services have earned.  Trademark rights in the US are based on use, not registration. Thus, trademarks should be searched thoroughly prior to adoption and appropriately marked by ™ (indicating the trademark has been applied for) or ® (“circle R,” indicating the trademark has been registered with the U.S. Patent and Trademark Office).  Domain name registrations, corporate name registrations, and even state or federal trademark registrations will not insulate a company from infringement assertions by a party with prior use of a similar mark.

5.  Protect your trademark well.

Companies that have valuable trademarks protect them vigorously. Although it is true that a company does not necessarily need to federally register a trademark to receive some protection, federal registration offers significant advantages. These advantages include a presumption of validity and exclusive ownership, nationwide protection, and constructive notice to others.  An important factor to keep in mind is that trademark rights are territorial. Accordingly,  registration in foreign countries where a company does business may be necessary. Trademark registration can be relatively inexpensive, especially when compared to the value a trademark provides to a company.

6.  Copyright can protect a company’s creative endeavors, but keeping the right can be tricky.

Copyrights are complex and often counter-intuitive. The key to remember is that copyrights are original works of authorship, and are aesthetic in nature unlike patented works that are defined by their utility. The author or creator of material subject to copyright protection, such as music, graphics, advertising, and photographs, is the owner unless there is a written agreement to the contrary, such as a work-made-for-hire agreement with an employer. Be aware of the use of material, such as clip art, material created by outside contractors or other parties, or even employees, can constitute copyright infringement.

7.  Registration is not required to protect a copyright, but it is easy, inexpensive, and worthwhile.

Copyright registration is not required for protection, as a work is subject to copyright as soon as it is “fixed” in any form.  However, it is important to obtain registration for several reasons, including the ability to obtain statutory (up to treble) damages and the ability to sue for infringement in general.

8.  IP can be protected as a trade secret, but make sure you have sufficient safeguards in place.

Many companies have important confidential and proprietary information that are not properly safeguarded. Examples of trade secrets are the formulas or recipes for products, marketing plans, client lists, methods of doing business, and business strategies that are often  key to businesses’ survival. However, like any secret, they are only valuable when kept secret, and there is little protection for leaked trade secrets beyond contractual rights.  These important assets can literally walk out the door with employees unless appropriate steps are taken to protect them as trade secrets, such as do-not-compete and do-not-disclose contracts with current and former employees and supply chain partners.

9.  Patents can protect innovative technology and designs.

Most people think of patents as protecting only “inventions.” While this is a true, it is an incomplete picture of what patents can protect. Patents can, of course, protect a new machine or device, but patents can also protect methods, innovative software, and in some cases, business methods. A special kind of patent—a design patent—can also be used to protect new industrial designs for almost anything, including software user interfaces.

Essentially, a patent is a legal monopoly that extends from the time a patent issues to up to 20 years from the date of application. (Design patents extend for 14 years from the grant date for a design patent.) Patents prevent anyone else from making, using, selling, or offering  method, machine, device, or design for sale anywhere, or importing it into the United States.  In exchange for this government-sanctioned monopoly, the patent holder must explain the best way to create its new and non-obvious invention. This description is then published by the U.S. Patent and Trademark Office (USPTO). Inventions are only protectable by filing for patent protection with the USPTO. There is no “common law” or “poor man’s” patent. Without patent protection, others may simply use the invention legally, and possibly attempt to claim the invention as their own.  In 2013, the patent rules changed from a first-to-invent system to a first-inventor-to-file system. With this change, it is more important than ever for a company to create a secure and efficient process for converting research and development findings into patent applications. The new rules also provide a lower cost patent application alternative for “micro entities,” companies smaller than those previously eligible for “small entity” status.

10.  A little bit of IP housekeeping can go a long way.

An IP audit can alert a company to potential IP that is not properly being protected. It can also give a company a sense of the risks it may have with respect to the IP of others. Companies should conduct IP audits and develop IP strategies to identify and protect its important assets.  The key to any audit is converting the results into measureable action items to account for, and enforce, an IP portfolio anywhere that a company conducts business.

Learn more about the legal, financial, and technological importance of intellectual property at our presentation, which will feature an expert IP attorney from the
United States Patent and Trademark Office (www.uspto.gov), the State Bar of Georgia (www.gabar.org), or its Intellectual Property Section (www.georgiaip.org).

Filed under: CLE Events , News | 15 March, 2013 by PBurrus

On March 01, 2013, at the High Museum of Art, the Intellectual Property Section hosted the Inaugural Georgia Intellectual Property Summit Dinner Gala Honoring Members of the Judiciary in conjunction with the Intellectual Property Section of the Atlanta Bar Association and the Atlanta Intellectual Property Inn of Court.

The event was a sellout with 190 people in attendance. In addition to members of the Section, there were twelve federal judges in attendance. The Hon. Sharon Prost and the Hon. Raymond C. Clevenger, III were in attendance from the Court of Appeals for the Federal Circuit. From the 11th Circuit, the Hon. Beverly Martin, the Hon. Frank M. Hull, and the Hon. Stanley F. Birch, Jr. were in attendance. From the Northern District of Georgia, the Hon. Julie E. Carnes, teh Hon. Charles A. Pannell, Jr., the Hon. Amy Totenberg, the Hon. William S. Duffey, Jr., the Hon. J. Clay Fuller, the Hon. Walter E. Johnson, teh Hon. Alan J. Baverman, and the Hon. Linda T. Walker also attended. James Hatten, District Court Executive and Clerk of Court, also attended. The exciting event provided an entertaining evening set against the backdrop of world-class art in Atlanta’s High Museum.

The evening began with a Judges’ Panel in the Hill Auditorium. The IP Section’s Judges’ Panel has perennially been a favorite event of its annual offshore institute. This event provided the opportunity to bring the panel to Atlanta for the benefit of those members who are not able to attend the offshore event. The Judges’ Panel featured a mock oral argument configured as an appeal to the United States Court of Appeals for the Federal Circuit from the District of “Little Whining.”  The case presented two primary issues: declaratory judgment jurisdiction and induced infringement. The appeal arose from a declaratory judgment suit filed by T. Fiddle, Inc. (“Fiddle”) against Wart-Hog Wands, Inc. (“Wands”).  Fiddle sought declaratory judgment that it does not infringe claim 1 of U.S Patent No. 9,876,543 (“the ’543 patent”).  After conducting limited discovery on the declaratory judgment issue, Wands filed a motion to dismiss the declaratory judgment complaint.  The motion to dismiss was denied. Wands appeals the District Court’s order denying its motion to dismiss Fiddle’s declaratory judgment action, and appeals the District Court’s order granting Fiddle’s summary judgment motion on the issue of induced infringement.

The panel consisted of the Hon. Sharon Prost, the Hon. Raymond C. Clevenger, III, and the Hon. Stanley F. Birch, Jr. Arguing on behalf of Wart-Hog Wands was Michael A. Morin, a partner at Finnegan. Arguing on behalf of T. Fiddle was Adam Conrad, a senior associate at King & Spalding. Virginia Carron, President of the Atlanta Intellectual Property Inn of Court, moderated the panel.

Guests then moved to the Robinson Atrium for a cocktail reception with hand-passed hors d’oeuvres. There was also an opportunity to enjoy a private viewing of “Frida & Diego: Passion, Politics, and Painting.”  This major exhibition of work by Frida Kahlo and Diego Rivera, features some of the best examples of art from two central figures of Mexican modernism.

A gourmet seated dinner and dessert, catered by Legendary Partners of Atlanta, followed.

After dinner, guests were entertained by the Grammy-nominated artist, Julian Lage, and his trio. It was a real coup getting Julian to perform at the event. Julian is a “once in a generation” virtuoso on guitar. A child prodigy,  the guitarist grew up in California and was the subject of an Academy Award-nominated documentary, Jules at Eight. His trio included Tupac Mantilla on percussion and Jorge Roeder on bass. Tupac is a master of the cajon, and even played percussion on Roeder’s bass during the performance. The trio played with a symbiosis seldom seen. The interaction of guitar, bass, and drums was truly amazing.

All About Jazz has called Lage “a giant in the making.” He is a protégé of legendary vibraphonist Gary Burton, recording two albums and touring with Burton. He has recently been featured on Piano Jazz: Rising Stars and NPR’s Tiny Desk Concerts. Lage received a Grammy nomination in 2009 for Best Contemporary Jazz Album. Time Out New York calls Lage’s music “a major find” that is “springy, intelligent chamber Americana that fits perfectly into a spectrum of Nonesuch-style players like Bill Frisell and Chris Thile’s Punch Brothers.”

The Intellectual Property Section of the Georgia would like to thank the following sponsors for their gracious and generous support of this event. Without these sponsors, the event would not be possible. Special thanks goes to the following:

PLATINUM SPONSORS:

GOLD SPONSORS:

SILVER SPONSORS:

Here are some photos of the event;

Filed under: News | 14 March, 2013 by Chris G

When: March 28, 2013, 5:30pm

Where: Tull Auditorium, Emory University School of Law, Atlanta, GA (Free parking in Lowergate Deck behind law school)

This event featured a panel on Social Media and Technology in the IP Workspace (1 CLE credit), as well as a Mentoring Forum. Over sixty people were in pre-registered for the event.