Special Edition

ABA-IPL eNews May 2020

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To Our Members

As we all work in new ways these days, the ABA-IPL Section is continuing to provide connection, collaboration, and content—part of the value and foundation of your membership. We are proud of the many benefits that are coming to you seamlessly, and we are excited about new opportunities to serve you.

This eNews features content related to books in our portfolio of more than 60 titles in all areas of IP. in This issue also presents selections from our high-profile Landslide® magazine delivered bi-monthly as part of your membership.

Because practice guidance is an important part of the Section’s promise to you, watch for these offerings and more:

Landslide® magazine, May/June 2020

Landslide® magazine, May/June 2020

  • Your May/June issue of Landslide magazine on "Best Practicing" is on its way
  • Launch of the IPLSPRING CLE Series is coming soon – nine programs coming in May and June to get the CLE credits you need.
  • New IP TALKS Podcast Series including “Addressing the COVID-19 Pandemic: Tips for Practicing IP Law from Home.” Listen to powerful 18-minute "Ted-style" talks by renowned and influential IP speakers; this series is free to Section members.  
  • Free monthly webinars coming in May include an IP Legislative update, protecting trade secrets during COVID-19, and cyber security. Send us your webinar topic ideas for what you would like to see covered in these programs to Abby.Phillips@americanbar.org.

During this time that is both challenging and invigorating, you can count on the ABA-IPL Section to provide content, information and education for you and your practice. The Section looks forward to serving you and our IP community, including through steadfast advocacy for our profession. We appreciate how much our membership is staying connected while we all engage in social distancing, and we cannot wait to see you in person when the times comes.

---George W. Jordan III
Chair, ABA Section of intellectual Property Law

Commercialization of IP Rights in China

One of the key issues that sparked the U.S.-China trade war involves intellectual property (IP). While the focus has been on forced technology transfers as well as outright theft of IP, there is another way in which technology flows into China. Every year there are many routine business transactions where a foreign owner of IP willingly and lucratively transfers its IP to China via licensing.

In this complex field, unlike with private enterprises in the United States, the political and structural background for the transactions, as well as the various laws and regulations, apply to licensing. China has a strategic plan for the importation and domestic development of technology. Any successful transaction must fall under and support the Chinese government’s overarching goal of going from a technology importer to self-sufficiency and, ultimately, to be a technology innovator.

An understanding of the rules as well as an historical insight into how the Chinese government views these transactions is critically important for practitioners.

NEW! Commercialization of IP Rights in China  

Read this related article from Landslide magazine: “Practical Tips for Trademark Protection in China”

Trade Secret Litigation Under the Uniform Trade Secrets Act

Three important litigation issues under the Uniform Trade Secrets Act (UTSA) are: (1) Is the information at issue a trade secret under the UTSA? (2) Did the defendant’s conduct constitute misappropriation under the UTSA? (3) Is the plaintiff entitled to an injunction, damages, and/or attorney’s fees under the UTSA (collectively the Trade Secret Issues)?

The new federal Defend Trade Secrets Act (DTSA) does not preempt state trade secret law under the UTSA, and many new, federal DTSA actions are still being brought in state courts under the UTSA; in those state actions, judges are frequently required to consider any of the 760 out of-state published UTSA cases that construe the same provisions of the UTSA that are at issue in those state actions.

UTSA claims are also being filed in most federal DTSA actions, and federal judges in the DTSA actions are frequently required to consider any of the out-of-state published UTSA cases that construe the same provisions of the UTSA that are at issue in such federal actions. Most federal courts are looking to UTSA cases to interpret the DTSA which seeks to create uniform federal trade secret law.

As stated in the legislative history of the DTSA, “This . . .legislation will provide a single, national standard for trade secret misappropriation with clear rules and predictability for everyone involved” (emphasis added). Senate and House Judiciary Committee Reports, pp. 14, 6, respectively.

Section 8 of the UTSA states: “This act shall be applied and construed to effectuate its general purpose to make uniform the law with respect to the subject of this Act among states enacting it.”

Uniform construction of the UTSA can thus benefit from attorneys litigating UTSA claims in state and federal court and judges seeing in-depth analysis of the trade secret issues in the 49 jurisdictions.

Just Published: The Law of Trade Secret Litigation Under the Uniform Trade Secrets Act, Second Edition

See these Landslide articles: Trade Secret Diligence in M&A

“What to Expect When You’re (Not) Expecting Misappropriation”

ANDA Litigation

The Drug Price Competition and Patent Term Restoration Act, commonly known as the “Hatch-Waxman Act,” in reference to the Act’s two congressional sponsors, Senator Orrin G. Hatch (R-Utah) and Henry A. Waxman (D-CA), reflects a compromise in the pharmaceutical industry in an effort to balance patent exclusivity against market competition.  This 1984 Act introduced amendments to the Federal Food, Drug and Cosmetic Act and the Patent Act of 1984,including provisions for an abbreviated process for the Food and Drug Administration’s (FDA) approval of generic versions of patented pharmaceuticals by the filing of an Abbreviated New Drug Application (ANDA), and a right to initiate patent litigation against an ANDA applicant submitting an ANDA with the FDA having a Paragraph IV certification.  Paragraph IV ANDA (or Hatch-Waxman) patent litigation was thus born.  Branded and generic pharmaceutical companies have employed the law ever since in a constant struggle to shape the landscape of the governing patent and regulatory regime and the marketplace for FDA-approved patented and generic drugs.

The resulting effect of the Hatch-Waxman Act on the law controlling the pharmaceutical market and its participants remains unsettled.  As a hybrid of two already complex areas of law, U.S. patent and FDA regulatory law, Hatch-Waxman patent litigation is highly involved, and as with any statutory text, is only the starting point.  Hatch-Waxman patent litigation has evolved substantially over the past twenty-five years and continues to change as the controlling statutes and regulations are amended and interpreted further.  During this period, branded and generic pharmaceutical companies have struggled to strengthen their respective positions by shaping the patent and regulatory law landscape governing the use and approval of generic drugs, with one constant being the ultimate value and significant impact of the litigation on the participants.  The economic value involved in Hatch-Waxman cases commonly exceeds hundreds of millions of dollars per case, and not surprisingly, litigations are hotly contested.

Publishing this Spring: ANDA Litigation, Third Edition

Copyright Myths

Copyright lawsuits involving hit songs and even dance moves are big news.  But copyright law remains misunderstood by the public (and lawyers).  Several persistent copyright “myths” continue to prevail, including confusion of public access and public domain, protection via the “poor man’s copyright,” the necessity of registration, and if fair use can be determined by limitations on the copied work.  Explanations and corrections for both creators and content users are important for everyone to understand and follow the actual law.

"Debunking Copyright Myths" Landslide magazine, July/August 2019

Open Source

There are advantages and risks in using open source software, and best practice guidance is helpful for use and risk mitigation.  Open source software provides certain advantages by design: the software is made available for developers to use, edit, and build upon.  In turn, this provides efficiency from use of already existing software and eliminates the need for a company to spend resources to develop new software.  Software is “open source” by the conditions that the initial developer places upon the source code’s distribution and any further editing.  While many variations exist, the basic criteria include free distribution, access to source code, and further free distribution of modifications and derived works from the source code, and no discrimination against persons or groups and field of use.  These advantages must be weighed against risks of using open source software, from cybersecurity to potential breaches of the term of use and consideration of laws in different countries.

“Open Source Software and the Collaborative Culture,” Landslide magazine, March/April 2020

Reverse Confusion

The trademark doctrine of "reverse confusion" is enjoying something of a renaissance.  In a reverse confusion case, a large junior user of an infringing mark may overwhelm a small junior user's trademark rights.  Consumers are confused into believing that the junior user is related to the senior user.  Often, the preferred remedy for the senior user is damages.  This Landslide® magazine article discusses how in the "David vs. Goliath" battle, David fell out of favor – viewed as simply wanting a piece of Goliath's sizeable assets.  It posits that courts are beginning to again side with the little guy and discusses the recent saga of Variety Stores, Inc. v. Wal-Mart Stores, Inc., 359 F. Supp. 3d 315 (E.D. N.C. 2019).  As of now, Wal-Mart is again appealing the decisions against it. 

“Reverse Confusion: A Trademark Doctrine in Decline or on the Rise?,” Landslide magazine, November/December 2019

Blocking Patents

The role of blocking patents in evaluating secondary considerations for patent obviousness has received significant attention following the Federal Circuit’s Acorda opinion.  Some industry observers have described the case as setting forth a novel “blocking-patent doctrine” that may negatively impact pharmaceutical innovation.  It is valuable to look at the economic foundations of secondary considerations and blocking patents and to consider how practitioners might analyze blocking patents in light of the guidance from Acorda.  In clarifying the role of blocking patents in the context of commercial success, long-felt need, and other secondary considerations, Acorda may actually strengthen past case law, rather than setting forth a new paradigm.

“Thinking Economically about Blocking Patents: Did Acorda Create a New Paradigm?," Landslide magazine, March/April 2020

Check out the entire ABA-IPL Books Portfolio in this new brochure!

Coming Soon from ABA-IPL Publishing

  • A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, Fourth Edition, Theodore H. Davis, Jr., Editor
  • The Essentials of Japanese Patent Prosecution, Shinsuke Ohnuki and Steven G. Parmelee
  • Summary of Covenants Not to Compete, Shaun M. Van Horn, Editor
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