IP Law News: Latest Need-to-Know from JD Supra


What’s new in intellectual property law? For starters: the White House strategy for combatting theft of US trade secrets, the Trademark Clearinghouse, and the growing backlash against “patent trolls.”

You should know…

1. The Obama Administration’s strategy on trade secret theft:

“Theft of trade secrets by persons acting on behalf of foreign governments and corporations is a major problem for U.S. manufacturers, including manufacturers in the automotive industries. Spurred by several high-profile instances of trade secret theft — including the convictions of Yu Xiang Dong for stealing trade secrets from Ford and of Shanshan Du and her husband Yu Qin for stealing trade secrets from General Motors — the Obama administration has released a strategy document detailing the measures it intends to take to help protect U.S. companies from such actions in the future.” (Foley & Lardner)

[T]he strategy and its supporting documentation highlight how frighteningly real the prospect of trade secrets theft is. The White House report is peppered with references to household name companies that have been victimized by trade secrets theft over the past few years, often at a cost of tens of millions of dollars or more. Mandated reports from the defense industry to the government indicate a 75 percent increase between FY2010 and FY2011 in reports of suspicious activity aimed at acquiring protected information. Coupled with a recent New York Times article asserting Chinese government involvement in more than 100 attempted cyber attacks on U.S. companies since 2006, these reports warrant sitting up and taking notice.” (McDermott Will & Emery)

“The Administration’s strategy to protect American trade secrets is five-fold:

  • Use diplomacy to encourage protection of intellectual property abroad;
  • Work with private domestic industries to develop best practices for protecting trade secrets;
  • Enhance domestic law enforcement in connection with intellectual property theft;
  • Improve domestic intellectual property legislation, and;
  • Educate the public on the importance of protecting intellectual property.” (Miller Canfield)

Read more on the administration’s efforts to protect U.S. trade secrets>>

2. The ICANN Trademark Clearinghouse:

“In connection with the anticipated launch of new domain name extensions as early as April 2013, brand owners soon will have new procedural protections at their disposal. Beginning on March 26, brand owners can begin submitting their trademarks to a Trademark Clearinghouse supervised by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN has created the Clearinghouse, a trademark database, as a means of protecting trademarks during the initial launch of the new domain name extensions, otherwise known as generic Top Level Domains, or gTLDs.” (Wilson Sonsini)

“The Trademark Clearinghouse is intended to be the sole global repository of trademark data to be used in conjunction with the issuance of new generic top level domains ‘gTLD’s’ slated for later this year. These new gTLD’s will greatly expand the ‘space’ of the Internet. Whereas now gTLD’s are limited to just a handful of domains (‘.com’, ‘.info’, ‘.net’, etc.), there are currently nearly 2,000 applications pending for new gTLDs. Rights holders who submit, and then have their trademarks validated by ICANN’s Trademark Clearinghouse, will have access to a range of services to protect their rights as the Internet expands rapidly into this new space.” (BakerHostetler)

“Registering a trademark with the Trademark Clearinghouse will also entitle a rights holder to a ‘Trademark Claims’ service following the ‘Sunrise’ period… At the outset, the ‘Trademark Claims’ service will provide a warning of potential infringement to any third party attempting to register a domain name that matches a trademark registered with the Trademark Clearinghouse. In the event that the third party proceeds to register the domain name despite such a notice, the ‘Trademark Claims’ service would send an automated notification to the trademark holder alerting it to the potential infringement.” (Katten Muchin Rosenman)

Read more on the Trademark Clearinghouse>>

3. The growing backlash against “patent trolls:”

“On February 27, Congressional Representatives Peter DeFazio, D-Oregon, and Jason Chaffetz, R-Utah, introduced a proposed bill intended to curb litigation initiated by Non-Practicing Entities (NPEs), or ‘patent trolls.’ NPE litigation has been a perennial hot political topic since the discussions leading up to the America Invents Act. In fact, President Obama publicly took aim at patent trolls two weeks ago during an online Fireside Chat, and called for Congress to ‘build some additional consensus on smarter patent laws” in order to stymie what the President described as the NPEs’ business model of “essentially leverag[ing] and hijack[ing] somebody else’s idea … [to] see if they can extort some money out of them.’” (Orrick)

“The U.S. District Court for the Northern District of California recently addressed whether a ‘patent aggregator’ (a.k.a. ‘anti-troll’), which is an organization formed by operating companies to protect against ‘non-practicing entities’ (NPEs, a.k.a. ‘patent trolls’), violated antitrust laws.Cascades Computer Innovation LLC (Cascades), an alleged troll, sued RPX Corp. (RPX), a patent aggregator, and several of RPX’s member companies, for violations of federal and state antitrust laws. The court subsequently granted the defendants’ motions to dismiss—but also granted Cascades leave to amend. Patent aggregators: Be warned that you may face antitrust claims in future disputes with patent trolls.” (Dinsmore & Shohl)

“Policy makers in Washington, DC have been hearing about the problems created by patent assertion entities – PAEs or, to some, ‘patent trolls’ – from a number of quarters over the past few years. PAEs are generally entities that acquire patents and patent families in order to enforce them in the marketplace. A critical difference between PAEs and other patent holders is that PAEs don’t generally make or sell products or services of their own, but simply license their patents to others. As a result, they are less susceptible to patent claims asserted by their targets and less concerned about discovery burdens than other parties in patent litigation. The activities of PAEs have been on the rise over the last few years, with estimated revenues of $29 billion from licensing in 2011, an increase of 400% since 2005, according to FTC Chairman Jon Leibowitz…” (Venable)

Read more on patent trolls>>

The updates:

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