I had a wonderful visit to Toledo for the Toledo Intellectual Property Law Association’s Spring Seminar last week (thanks to Ray Meiers and TIPLA for their invitation and hospitality). Here are the highlights of the three-hour presentation:
My Not-So-Fearless Predictions for 2012:
My presentation included a recap of 2011 (which incorporated my top 10 trade secret decisions of last year), as well as my predictions for trends in trade secret and non-compete law for 2012. Here are some of those predictions:
1. Uncertainty under the America Invents Act will lead to more trade secrets. Changes wrought under the AIA will lead to uncertainty in the patent context and result in greater emphasis on trade secret protection. James Schweikert and I have written about the impact of the newly-expanded prior commercial use defense and my opinion that it will lead to more use of trade secrets. One critical factor, however, not confined to any of the AIA’s new procedures or provisions is the uncertainty that comes with such significant change. Uncertainty of this magnitude inevitably leads to litigation and greater expense to prosecute and litigate patents. I predict that the AIA will prove to be a veritable cornucopia of litigation. Consequently, in close calls between patents and trade secrets, companies will opt for trade secret protection to avoid that expense.
2. More international issues. China, DuPont v. Kolon, cyberattacks — more and more high profile trade secrets disputes will involve foreign parties and issues.
3. Courts will continue to permit greater employee mobility. Efforts to enforce non-competes will get tougher and tougher as more courts tacitly adopt the California model. Expect more legislative efforts like those in Illinois and Virginia that look to level the playing field between employees and employers. The lesson? Choose your battles wisely.
4. Social media will continue to accelerate change in trade secret and employment relationships. Rulings in the PhoneDog v. Kravitz and Eagle v. Morgan cases will cement the importance of written agreements in disputes over ownership and control (I predict the former employees in each case will prevail). Given the continued exponential growth of social media, the law of unintended consequences will continue to vex employers and provide greater uncertainty in 2012.
5. Emphasis on “Ownership” and “Inventorship” Provisions. For these reasons, companies should focus on cleaning up and strengthening their inventorship and ownership provisions in employment and consultant contracts. Relying on these provisions in a litigation may be cleaner at the end of the day, as it will allow a plaintiff to emphasize the theft of information without worrying about having to argue over its secrecy.
Calling all Inventors:
Patrick Anderson, the President of Patent Calls, Inc., a patent monetization firm based out of Austin, Texas, provided insights to inventors and companies looking to maximize the financial benefits of their patents. I learned a lot from Patrick’s presentation about the depth, nature and scope of the patent monetization community.
Patrick detailed a number of the different business models available to a patent owner, including offensive acquisitions, exclusive agency and contingent advisory services. These models include very little, if any, advanced cash, with most of the patent owner’s revenue being generated through licensing services. I can’t do justice to those concepts in this short post but for those interested in learning more, the slide deck for Patrick’s PowerPoint presentation can be found here.
The Power of Stories:
The morning’s final speaker was Sam Han, PhD, a professor of law at the University of Dayton. Sam’s presentation addressed the topic of substance abuse and lawyers, the role of key chemicals that operate within the brain, and their impact on human behavior.
To illustrate his main points, Sam provided a number compelling stories, including one from Gary Klein’s bestseller, “Sources of Power: How People Make Decisions.” To explain how the brain breaks down and segregates information, Sam described the story of the HMS Gloucester, a battleship tasked with shooting down silkworm missiles during the Persian Gulf War. The ship’s crew faced the excruciating decision of whether to fire upon fast-moving radar blips, not knowing whether they were approaching enemy missiles or friendly craft returning to a nearby carrier.
You could have heard a pin drop in the auditorium as Sam walked the audience through what it was like in the ship’s command center that morning. It reminded me of the old trial lawyer bromide about making sure you communicate your case through a story, and of the sway that stories hold over us, even as we become adults.