Magazine Archive
Reflections on the Changing Landscape of IP Law
As the CCCBA IP Section Chair, I am honored to act as Guest Editor for the Contra Costa Lawyer’s October 2019 issue devoted to intellectual property. Particularly in the last decade, the continuous evolution of IP law has seen new legislation, regulations, and other IP-related opportunities and challenges around the procurement and protection of IP...
Read ArticleBypassing Highway [35 U.S.C. Section] 101
This article is intended to address one of the most contentious issues in US patent law, namely, patent eligibility. This article addresses a draft proposal to overhaul the current law. 1. Proposed Changes to §§100 and 101 A bipartisan group of Senators and Representatives produced a draft framework for amending 35 U.S.C. §§100 and 101....
Read ArticleEarly Stage Protection of IP
Starting a new business is exciting and fun, but too often founders overlook basic Intellectual property (IP) protection. While high tech businesses are aware of patent possibilities, they too often overlook more affordable, and often more valuable, forms of IP protection. Besides patents, intellectual property includes securing rights to valuable assets like the company name,...
Read ArticleThe Evolving Scope of the Inter Partes Review Statutory Time Bar
Inter partes review (“IPR”) is an adversarial administrative proceeding at the United States Patent and Trademark Office allowing a party to challenge the validity of an issued patent before the Patent Trial and Appeal Board (“PTAB”). Since the enactment of the America Invents Act, IPR proceedings have become an integral part of litigating patent disputes, often...
Read ArticlePreserving Employer’s Patent Rights with Shop Rights & Hired-to-Invent Doctrines
By default, U.S. patent law presumes that inventors own their inventions, even when developed during the course of employment.1As such, employers typically require new employees to sign an employment agreement, assigning patent rights to the employer at the time of hire. But what happens when no such agreement is executed or an employee refuses to...
Read ArticleEarly Mediation of Intellectual Property Disputes: The Strategic Proposition
The peculiarities of different types of intellectual property disputes – patents, trademarks, copyrights and trade secrets – are often cited as reasons to defer settlement efforts. Patent cases are likened to a game of Chutes and Ladders, with multiple spots where a case can fail or proceed. Trade secrets often involve bitter accusations of theft,...
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