May 21, 2018
Author(s): Ariel H. Roth
Nixon Peabody LLP together with Dennemeyer Group recently hosted the 2018 IP Corporate Counsel forum, featuring a discussion on protecting and leveraging IP, including patents and trademarks, as businesses grapple with continuous change.
Craft and draft: establishing an enforceable patent portfolio strategy. One of the ways businesses are grappling with continuous change is establishing an enforceable patent portfolio strategy. A key distinctive step in the overall patent prosecution process is keeping a perspective of the inventor’s true interest. This not only facilitates collaboration, but also helps the patent attorney develop the overall prosecution strategy for the patent asset. Businesses should also bear in mind four main reasons to obtain a patent when establishing their patent strategy: (1) to improve reputation, (2) to protect the product, (3) to allow one’s own company the freedom to operate (such as a trade or a license) and (4) to increase revenue.
There are also global protection considerations in light of recent trends in foreign patent offices. The United States Patent and Trademark Office (USPTO) is not the only patent system, and it is important for businesses to broaden their perspective and consider the policy swings in the last ten years, including recent changes to the U.S. post-grant proceedings such as inter partes reviews.
The panelists included: Janet Garetto, Partner at Nixon Peabody LLP; Sylvia Chen, Patent Attorney at Google; Greg Mayer, Assistant General Counsel and Chief IP Counsel at Hollister; and Nicole Janovick, PhD, Invention Manager at INVO Northwestern University. The discussion was moderated by Jeff Costellia, Partner at Nixon Peabody LLP.
Building a brand blueprint: playing offense and defense. In the past year, there were 425,000 trademark filings in the United States and eight million globally. These numbers indicate the value and importance of brand recognition in the global marketplace. The IP industry is seeing a shift toward brands being more proactive, both in obtaining trademarks and enforcing them. For example, social media is now often used to evaluate whether a mark will gain traction, and it is simultaneously used to identify infringement activities. With more and more trademarks “crowding” the market, businesses should also practice effective cost management, such as registering several domain names before deciding to register a trademark.
The panelists included: Staci Riordan, Partner at Nixon Peabody LLP; Geoff Baker, Assistant General Counsel at Sears Holding; and Kathleen Wilt, Senior Counsel at Thermos. The discussion was moderated by Cary Levitt, Chief Operating Officer at Dennemeyer Group.
Issues of asserting infringement in the United States in a world of global supply: examining America’s market first (among others) for patent protection. With increasing globalization around the world, patent infringement is also more pronounced outside of the United States. There are many decisions businesses must make in the prosecution process, and they should think ahead of any potential litigation that may arise in the future. When infringement activities are observed, particularly in a manufacturing contractor-vendor scenario, business decision-makers and IP attorneys should first identify the business objective, i.e., whether it is more important to enforce a patent against an infringer or to maintain an existing relationship, thereby deciding exactly who the defendant will be.
On the other hand, preventative measures can be very useful. There is an inevitable trend of global manufacturing being shifted to other places around the world, and intellectual property decisions should follow that trend as well. The critical part is to anticipate this shift as it is happening and have value in the patents one obtains in those countries.
The panelists included: Wayne Tang, Counsel at Nixon Peabody LLP and Maurice Finnegan, Group Technology Counsel at Illinois Tool Works. The discussion was moderated by Matt Werber, Counsel at Nixon Peabody LLP.
Nixon Peabody also took this discussion forum to San Francisco in May.
The foregoing has been prepared for the general information of clients and friends of the firm. It is not meant to provide legal advice with respect to any specific matter and should not be acted upon without professional counsel. If you have any questions or require any further information regarding these or other related matters, please contact your regular Nixon Peabody LLP representative. This material may be considered advertising under certain rules of professional conduct.
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