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Archive for the ‘Intellectual Property’ Category

GE says bye-bye to biotech. … So it goes.

 

February 25, 2019  — The Wall Street Journal headline reads: GE to Sell Its Biotech Business for $21 BillionI now know for certain that we’re in a topsy-turvy world.

General Electric logoBack in 1980 it was lawyers for the General Electric company that persuaded the U.S. Supreme Court to affirm, in the legendary decision of Diamond v. Chakrabarty, that even a living organism could be the subject of a United States patent.   Numerous commentators have observed that this green-light signal from the legal system paved the way for billions of dollars of investment in biotechnology research and development, spurring the fruition of this nascent field.  These include David Kappos, who, as the Director of the U.S. Patent and Trademark Office, said so in a speech to the international convention of the Biotechnology Industry Organization in 2011 (click here for BIOtechNOW’s July 5, 2011 article about his speech).

But since then, the Court has eroded the effect of that formerly auspicious doctrine.  For example, in 2013, the Ass’n of Molecular Pathologists  v. Myriad Genetics case held that even a unique and non-obvious DNA molecular probe wouldn’t be patentable if the sequence of its nucleotides is the same as those of a portion of a naturally occurring chromosome. 

Probably it’s mere coincidence that GE is now divesting its biotech arm.

But as Kurt Vonnegut would remind us  …. So it goes.

Gerry Elman and Josh Waterston’s DPAC Presentation on Trade Secrets – December 18, 2018

On December 18th, 2018, Gerry Elman and Josh Waterston hosted a discussion with the Data Protection Advisory Council, on the topic of Trade Secrets: an Essential Element of Your Intellectual Property Strategy.

Companies generally have records of their intellectual property ('IP') in the categories of patent, trademark, and copyright. But most overlook the value of their data that would qualify for protection as trade secrets. Because trade secrets don't get registered with a government agency, they're the red-headed stepchild in the IP family. Yet when your company assesses and documents its trade secrets, you enhance their protection against misappropriation. Gerry Elman and Josh Waterston of Elman Technology Law, P.C., shared a roadmap for making this a part of your comprehensive data protection strategy. Companies can learn how to get the benefit of trade secret protection not only under longstanding local state law, but also under a comparatively new federal statute – the Defend Trade Secrets Act of 2016.

Download their presentation on Trade Secrets: an Essential Element of Your Intellectual Property Strategy using the form below.

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Watch Gene Dolgoff’s video on The Importance of Patents


We are delighted to share with you this video by our client Gene Dolgoff. Gerry Elman helped him file his first patent application in 1968, which Gene mentions here. And we are honored to be helping protect the intellectual property for his latest inventions as well. Click the > PLAY button in the image to start the video.

The Laughable Non-Disclosure Agreement

Summary: Update Non-Disclosure Agreements (NDAs) to match the new digital reality. Businesses should be proactive to address outdated provisions in NDAs before problems occur.

Remember the olden days of fax machines? You’d receive a fax with a long disclaimer at the bottom, saying something like, “This fax may contain super-secret information which could endanger our company, our world, and even our universe, if it should fall into the wrong hands. If you receive this fax by accident, you must immediately return the fax to the sender, or we will send our goons to find and severely punish you.” The question is, how many people actually read and complied with these statements? Probably not many.

Faxes have now mostly given way to e-mail, and the “return” language has usually been replaced by “destroy” language along the lines of “If you receive this e-mail by accident, you must immediately destroy any printed copies by placing them in a safe and then dropping the safe into a volcano. Then throw your hard drive into the volcano for good measure.” But how effective is such language?

This brings me to a recent question by a company that’s been a client of this firm for many years. We had drafted a template Non-Disclosure Agreement (“NDA”) for them years ago, using language typical for that time. After the parties’ relationship ends, or within a specific timeframe, the NDA calls for the recipient of the confidential information to return it to the discloser. Now that information is generally transmitted digitally, rather than on paper, the client asked how to comply with the obligations created under these old NDAs. Good question!

The answer for existing NDAs is that the parties should desirably communicate before there are problems. My advice would be for the recipient to offer an addendum to the previous NDA, in which the parties mutually agree that it’s okay when physical copies of the confidential information have been returned by the recipient, and/or that digital copies have been destroyed, and if there are backup copies created in the recipient’s ordinary course of business, that they have not been accessed – and will never be accessed – in violation of the NDA.

Most NDAs that we currently prepare require that tangible versions of confidential information be returned, and that electronic versions be destroyed, and that the recipient certify this in writing. Some versions provide for an audit of these actions.

We also contemplate suggesting language regarding backups, so that an innocent party is not burned in the event of litigation. Imagine the exchange:

Mean Lawyer: “Didn’t you certify that you returned or destroyed this confidential information?”
Innocent Client: “Why yes, I did so right after volunteering at the homeless shelter and visiting my grandmother at the nursing home, like I always do.”
Mean Lawyer: “Then WHY did we find 1,000 copies of this super-secret confidential information scattered about on your backup drives and on 17 cloud services???”
Innocent Client: “Gulp!”

The takeaway: review your existing NDAs, to ensure that you’re not violating your obligations, and to ensure that your company’s confidential information isn’t scattered about. Contact us for advice (even by fax) before problems arise. It costs much less to prevent problems than to fix them!

Joshua D. Waterston, Esq.
Elman Technology Law, P.C.

Image credit: Topsecretsidebar.jpg, https://commons.wikimedia.org/w/index.php?title=File:Topsecretsidebar.jpg&oldid=187366443 (CC BY-SA 4.0)

Gerry Elman’s Temple Law School presentation on Patents and the Internet of Things

On April 3, 2018, Gerry was a guest lecturer at Temple Law School, on the topic of Patents and The Internet of Things. If you’re developing a Smart Technology, helping a company navigate the Internet of Things, or just curious about the subject, check out his slideshow.

To download this presentation, please complete the form below to provide or update your contact information. Then you’ll see a link immediately below, which you can click on to download a digital copy of the presentation in PDF format. We’ll add you to our mailing list to share information about events and other news which we think would be of interest.

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2018 Martindale-Hubbell® Peer Review Rating of AV Preeminent® Gerry Elman has received a 2018 Martindale-Hubbell® Peer Review Rating of AV Preeminent®
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