The America Invents Act (AIA) is now law, and Dennis Crouch, PatentlyO, believes it serves to complete international harmonization in patent processes.
Interestingly, the Act only refers to harmonization once in the "sense of Congress:”
It is the sense of Congress that converting the U.S. patent system from first to invent to a system of first inventor to file will improve the U.S. patent system and promote harmonization of the U.S. patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the U.S. conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing exclusive rights of inventors to their discoveries.
Though not binding, the statement serves as a strategic indicator of congressional sentiment, which will become important in the inevitable political, constitutional, and ideological challenges that lie ahead.
R. Mark Halligan (Nixon Peabody) writes that even before the president signed the America Invents Act (last Friday), trade secrets protections were flourishing. For example, a business method for hedging risks such as the one at issue in Bilski still can be protectable as a trade secret. And Licensing Trade Secrets provides examples of how trade secrets can add to licensing revenue streams.
Most analysts believe patent reform will stimulate more use of available trade secrets protections. Fernando Torres of IPMetrics agrees: the change to first-to-file from first-to-invent “would bring the U.S. system into accord with most patent systems overseas, but the transition would bring about several changes to the strategy of patent filing and the relative value of keeping inventions secret.”
An example: earlier this month, a three-person arbitration panel found Colorado-based ADA-ES Inc. had induced two former employees of Norit to break their confidentiality agreements. These mandated keeping secret Norit’s proprietary information on the best locations to build activated-carbon product plants.
Norit accepted a $40M upfront cash settlement, plus royalties on all related activated-carbon sales for the next eight years.
Dow AgroSciences was the victor last week in an Indiana Federal Court ruling in which Kexue Huang pled guilty to multiple counts of passing proprietary information and trade secrets about the development of organic pesticides to a foreign government, a violation of the Economic Espionage Act.
Since its passage in 1996, the EEA has been a seldom-used tactic to deter the targeting of U.S. companies by foreign agents. (Consecutive Annual Reports produced by the Office of the National Counterintelligence Executive describe increases in the threat of economic espionage.)
Yet, Daniel Schanpp and Ernest Badway write in a recent New York Law Journal article that for Dow AgroSciences, winning their EEA case is only “half the battle;” the other half lies in “the recovery of monetary damages, particularly when a trade secret has already been publicly disclosed through a defendant’s misappropriations.” Schanpp and Badway point out that “calculating the amount of damages for a misappropriation is a factual determination and the formula used in making that calculation is a question of law.”
IPVW believes the EEA has been used far too sparingly since 1996. There are underlying geo-political elements to bringing EEA cases, but U.S. Attorneys should be less hesitant to use the EEA as a legal tool to deter these dramatic and costly illegal activities.
Defendants in illegal downloading (IP infringement) prosecutions are challenging the subpoenaing of mega groups of John Does gleaned from internet service providers. The idea is to find the relevant IP addresses, and then sue for the names of alleged downloaders.
Once plaintiff's counsel has the relevant ISP subscriber names, letters are sent threatening lawsuits. Most suits are dismissed; a few make it to court with settlements typically in the $5,000 to $10,000 range.
Illegal downloading of IP is a rampant and global phenomenon which IPVW clearly stands on the side of IP protection and rights. IPVW does not characterize these subpoena initiatives as being over-reaching ‘fishing’ expeditions as some do.
One problem arising from these John Doe suits, according to a recent NPR On The Media program, is that some subscribers who receive a subpoena claim they have no knowledge of the infringed work or the illegal activity. That is, subpoenas are “sometimes made against hospitals and hotels that offer free wi-fi to anyone who walks through their doors.”
IPVW wonders if the availability of free wi-fi service will eventually be curtailed or come with stipulations, not unlike Craig's List experienced in it’s recent bout with reputation risk regarding its adult sex listings. Tell us what you think, email mikem@bvresources.com. |
