Author: National Law Forum

A group of in-house attorneys developed the National Law Review on-line edition to create an easy to use resource to capture legal trends and news as they first start to emerge. We were looking for a better way to organize, vet and easily retrieve all the updates that were being sent to us on a daily basis.In the process, we’ve become one of the highest volume business law websites in the U.S. Today, the National Law Review’s seasoned editors screen and classify breaking news and analysis authored by recognized legal professionals and our own journalists. There is no log in to access the database and new articles are added hourly. The National Law Review revolutionized legal publication in 1888 and this cutting-edge tradition continues today.

National Law Review's Student Legal Writing Contest Deadline is Friday November 12th

Everybody’s talking about how abysmal the job market is for law students – why not build your resume while still in school?  Young lawyers are under increasing pressure to start thinking about business development activities earlier in than ever in their careers.  One tried and true way of building one’s professional reputation is by publishing.  One sure way to get noticed and to help others is to write  in a style which is helpful and educational to prospective clients.  The National Law Review is one of the nation’s premier resources for secondary legal analysis for businesses and twice a year we offer students the opportunity to submit consumer-friendly articles for publication.

The winning articles will be published online starting in Mid November 2010. The top article(s) chosen will be featured on the NLR home page. Up to 5 runner-up articles will also be posted in the NLR searchable database.

Please note that although students are encouraged to submit articles addressing Labor & Employment Law, the featured topic for the November issue, they may also submit entries covering current issues related to other areas of the law.

 

Why Students Should Submit Articles

  • Students have the opportunity to publicly display their legal knowledge and skills.
  • The student’s photo, biography, and contact information will be posted with each article, allowing for professional recognition and exposure.
  • Winning articles are published alongside those written by respected attorneys from Am Law 200 and other prominent firms as well as from other respected professional associations.
  • Now more than ever, business development skills are expected from law firm associates earlier in their careers. NLR wants to give law students valuable experience generating consumer-friendly legal content of the sort which is included for publication in law firm client newsletters, law firm blogs, bar association journals and trade association publications.
  • Student postings will remain in the NLR online database for up to two years, easily accessed by potential employers.
  • For more Information and contest rules, please click here.

Registration Symbol Misuse As Trademark Fraud?

Featured Guest Bloggers this week at the National Law Review are from our friends up north in Minneapolis at Winthrop & Weinstine.  Steven Baird discusses appropriate times to use the “Registered” symbol.

Trademark types frequently encounter brand owners and managers with substantial misunderstanding and confusion about when use of the federal registration notice symbol is lawful. Most of the time a misuse or technical violation results from an honest mistake, but sometimes the misuse is, and starts out intentional, or perhaps the misuse begins to look intentional if it isn’t promptly fixed or corrected upon learning of the misuse.

Section 906 of the U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (TMEP) answers some of the most common questions regarding misuse with this guidance:

  • The federal registration symbol should be used only on or in connection with the goods or services that are listed in the federal registration.
  • The federal registration symbol may not be used with marks that are not actually registered in the USPTO.
  • Even if an application is pending, the federal registration symbol may not be used until the mark is registered.
  • Registration in a state of the United States does not entitle a person to use the federal registration notice.
  • A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.

This information and guidance, however, begs the question of whether misuse is a serious violation and the possible consequences of misusing the registration symbol? As you may recall, we’ve talked a bit before about possible false advertising claims against the trademark owner who misuses the symbol and a possible unclean hands defense in favor of the trademark owner’s enforcement target, especially when the misuse is accompanied by a bad faith intent to deceive.

As it turns out, we really need to add another important potential consequence to the list, one that I fear will be abused and used for pure tactical advantage in trademark enforcement efforts, namely, assertions of trademark fraud, despite the current heightened standard of fraud, with the Court of Appeals for the Federal Circuit now requiring a specific intent to deceive the Trademark Office. Actually, registration symbol misuse is not really a new ground of trademark fraud, but it has been rather uncommonly and infrequently alleged, at least in recent years.

One of the reasons for my concern of abuse stems from a recent TTAB decision permitting this rather conclusory and bare bones trademark fraud claim to survive a motion to dismiss:

Applicant knowingly and willfully used the ® symbol in connection with the term … in an attempt to deceive or mislead consumers or others in the trade into believing that the mark was registered.

A pdf of the TTAB’s decision with scant analysis — from about six weeks ago — inNorth Atlantic Operating Co., Inc. et al v. DRL Enterprises, Inc. Opposition No. 91158276), is linked here.

Relying only on the above-quoted allegation, the TTAB decided: “We find that the allegation set forth above includes the necessary pleading of intent, and specifies that applicant’s misuse was knowing and willful, and an attempt to deceive or mislead consumers.”

In contrast to most trademark fraud cases where various false and misleading statements — relied upon by the Trademark Office — are the focus of the fraud challenge, in North Atlantic Operating Co., the focus was on an alleged intent to deceive the public, as opposed to the USPTO.

The Federal Circuit has held: “The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark.”Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991). Presumably, the same conduct would sustain a petition to cancel as well. Although, the statutory support for the broader focus is unclear, it appears that an intent to deceive the USPTO is not required, so long as there is an intent to deceive the relevant public regarding registration.

Another reason for my concern stems from the apparently satisfactory yet conclusory fraud allegation. There are simply no details regarding the who, what, where, why, and when, of the alleged trademark fraud, and this failure appears to contradict recent TTAB case law confirming that fraud must be pled with particularity under Fed. R. Civ. P. 9(b). Indeed, our friend John Welch over at the TTABlog has reported multiple times on the TTAB tightening up the pleading requirements for trademark fraud claims, following the Federal Circuit’s landmark decision in In re Bose, here, here, and here.

Finally, the Federal Circuit’s Copelands’ Enterprises decision makes clear that how quickly a trademark owner corrects a misuse of the registration notice symbol after learning of the misuse, will impact the determination of whether the trademark owner is charged with an intention to deceive the public. If we couple that guidance with the current uncertainty of whether the requisite intent may be established with a reckless disregard for the truth, trademark types and the brand owners and managers they represent, are all well-advised to pay more attention to what many previously have written off as honest mistakes and technical violations with no real or significant consequences.

Only time will tell whether the registration notice symbol misuse type of trademark fraud claim will remain uncommon or gain traction in our Post-Bose world.

© 1994 – 2010 Winthrop & Weinstine, P. A.

Law Firms Guarantee your ROI When Hiring an Interpreter

The National Law Review’s Business of Law Guest Blogger is Maria Cristina de la Vega who provides some great insight for legal professionals  on what to look for when hiring an interpreter. 

Interpreting/translating is a relatively young industry in the U.S. and it is currently unregulated.  Interpreters are not legally required to have an accreditation unless they are hired directly by the court system and are being paid with taxpayer dollars. Because it is relatively easy for a bilingual individual to hang out his shingle, the consumer, especially attorneys, need to know what to look for in a language professional to ensure that interpreted testimony faithfully follows the source language. Most cases rely heavily on testimony to decipher the facts at issue and to form an understanding of a witness’s credibility and motivation.  A misinterpretation or a nuance that is not conveyed properly can impact the outcome of a case.  To avoid this from happening, ask your language provider for his/her credentials.

Whereas an interpreter is bilingual, a bilingual individual is not necessarily an interpreter.  It is one thing to speak two or more languages, but quite another to be able to professionally interpret from and into those languages.  This fact may not be apparent in casual conversation and may not become evident unless the attorneys and/or parties involved speak both languages, know the specific terms used in the case and are able to recognize them.  In some situations, those listening may not speak one of the languages well enough to judge the quality of the interpretation.  Attorneys and clients in general are not set up to screen language providers to verify their proficiency, nor should they have to.  The best way to do this is to retain the services of an established agency or Language Services Provider (LSP).  The best ones to partner with are those that have experience in the industry, that source their interpreters from existing professionals and from reputable university-level language programs, that require accreditation from the interpreters they employ even if it is not yet mandatory, and that regularly strive to develop their personnel through continuing education.    These firms make sure that the interpreters they send you have the training and credentials to carry out your assignments at a specialized level. Available 24 hours a day 7 days a week to schedule interpreters for you anywhere in the U.S. as well as abroad, they can also provide you with written translations as well as certified linguists to render expert witness testimony on language issues.

What credentials should an interpreter have?

When an attorney needs an interpreter for a legal proceeding, he should first verify whether the interpreter holds an accredited certification, assuming there is one for the needed language combination. In the United States, there are several certification programs. The most common is the standardized interpreting examination offered by the Consortium for Language Access in the Courts at the National Center for State Courts.  There is also the Federal Court Interpreter Certification Exam which is currently being offered only in Spanish.  The National Association of Judiciary Interpreters and Translators (NAJIT) offers another certification, as does the State Department.

If the candidate in question has the required proficiency as indicated by a recognized certification, some of the main skills he should possess and which are acquired from experience are: sight translation, a trained memory supported by note-taking skills to render testimony faithfully, a knowledge of specialized terminology, colloquialisms and slang in order to interpret in the correct register, and how to control the speed at which the attorney and the witnesses speak, if necessary, in order to have the opportunity to accurately interpret everything that is being said. It is difficult to interrupt witnesses giving testimony laden with emotions so it is critically important to have a professional interpreter that can render long statements, doing the interpretation.

Another useful indicator of the interpreter’s professionalism is membership in an industry association such as NAJIT or ATA  (American Translators Association) that have Codes of Ethics governing the profession that members must adhere to.  In addition, these organizations keep members abreast of developments in the field.

How to work with an interpreter

It is equally important for attorneys to know how to work properly with an interpreter. Unfortunately, interpreters are sometimes considered a necessary evil that must be borne and many attorneys subscribe to the myth that, because you are an “interpreter,” you are a walking dictionary who is able to communicate any terminology, notwithstanding the level of complexity, into another language.  Interpreters regularly work in diverse settings for widely differing industries and yet we are not specialists in these industries to the degree that our clients are. Hence, it is important when dealing with complex and/or technically challenging cases, that the interpreter be given an opportunity and sufficient time to acquaint himself, at a minimum, with the pleadings in the case and with any pertinent documents or prior testimony that will be discussed at the proceeding for which he is being scheduled. This is so that we may prepare a bilingual glossary of specialized terms to study, which will result in a more polished, professional interpretation.  In addition to our responsibility as officers of the court not to discuss the cases we work on, we also stand ready to sign confidentiality agreements to assuage any fears regarding sharing of information. To avoid unforeseen difficulties, the scheduling coordinators of established LSPs regularly ask how long proceedings are expected to take and what sort of testimony will be presented to ascertain who the best interpreter is for the assignment, based on experience, and whether he will have to study, for example, dedicated medical terminology or engineering language, among many possible specialties. Whenever possible, book services well ahead of time as good interpreters are in high demand. Check the reputation of the LSP in language-dedicated sites such as Proz.com or ask your colleagues in the legal community about their dealings with the firm being considered.

Guidelines to Working with an Interpreter

  • Ascertain the interpreter’s credentials
  • When relevant, give the interpreter case documents to prepare
  • Verify whether team interpreting is required
  • Address witnesses with direct speech as if the interpreter were not present.

Other useful tips to keep in mind are to use direct speech when using the services of an interpreter.  Address the witness in the first person, as if there were no interpreter present, to safeguard the integrity of the transcript.  Avoid using proverbs i.e. “Where there’s smoke there’s fire” because although it may translate, there may be no direct translation, or worse yet, there may be another cultural equivalent to the sense behind the saying and the witness could end up giving an answer that is framed in very different terms from what you asked.  Furthermore, you would be adding unnecessary stress to the interpreter’s job by asking him to do mental gymnastics  in a matter of seconds to come up with a viable interpretation of an artistic/literary term  When working with consecutive interpretation (speech followed by a pause to allow for interpretation), attorneys and witnesses should pause when a complete thought or phrase has been rendered.  The speech should not be so short that the sense is unintelligible nor so long that the interpreter cannot possibly remember it to give an accurate interpretation.  An experienced interpreter will quickly establish the required rhythm among the parties involved in the taking of testimony so that the process will be smooth.  It is important that only one person speak at a time for the same reason that a court reporter requires it, so that both the full question as well as all testimony is interpreted and taken down.

The length of time involved in an interpreted proceeding brings up another key point that is often overlooked, which is interpreter fatigue.  According to a NAJIT position paper on the topic,http://www.najit.org/documents/Team_Interpreting.pdf,team interpreting “should be used for lengthy proceedings as a quality control mechanism to preserve the accuracy of the interpretation.”  The way this works is that two interpreters substitute one another approximately every half hour.  It has been found in scientific studies, among which is one at the University of Geneva in 1998, that after a certain amount of time working, an interpreter reaches a saturation point as mental circuits become overloaded and this condition leads to errors.[1]

If the interpreter is going to be interpreting a proceeding simultaneously to the witnesses rather than interpreting from the witness stand, it is important that the interpreter be located in a position to properly hear and have visual contact with the parties speaking.  Sound equipment (earphones, a microphone and a transmitter) should preferably be used to interpret the event, transmitting to receivers worn by the parties requiring the interpretation. That way, the interpreter can avoid the additional stress, inconvenience and disruption caused by having to stand close to one or more individuals to whisper an interpretation of what is going on. Many courts have this equipment installed in their courtrooms; otherwise, the LSP can be asked to have the interpreter bring a portable system.  LSPs always have units available for their interpreters to use.

If the language at issue is not one for which there are interpreters readily available in your area or there are many dialects of the language, it is advisable that the interpreter selected speak with the witness in advance to ensure that they can understand one another well.  Lastly, explain to the witnesses the role of the interpreter.  That the interpreter is a neutral party and an officer of the court.  That witnesses cannot have private conversations with him while they are testifying, That they should expect that the interpreter will render everything said to him on the stand into the language of the Court (English) but in turn, the interpreter will keep any information gained in the course of his work outside of court, confidential. Parties/witnesses should also know that the interpreter is bound to report any ethical breaches to the appropriate authorities.

Awareness and adherence to these simple guidelines will go a long way towards making sure that you have a positive, productive experience every time you retain the services of an LSP. NAJIT has formed a working group entitled the Bench and Bar Committee to disseminate this information among the judiciary and practicing attorneys. Our objective as interpreters is to be an asset to attorneys in assisting you to present testimony in a seamless, professional manner that you can depend on.

[1] Moser-Mercer, B., Kunzli, B., and Korac, M., 1998  “Prolonged turns in interpreting: Effects on quality, physiological and psychological stress.” University of Geneva, École de Traduction et d’ Interprétation. Interpreting,Vol. 3 (1), p. 47-64. John Benjamin Publishing Co.

 

© 2010 ProTranslating, Inc. All Rights Reserved.

About the Author:

Maria Cristina de la Vega holds an M.B.A. and has more than 35 years of experience in court interpreting.  She is a federally certified Spanish interpreter and is also certified by the State of Florida in that capacity. She is a regular contributor to publications that deal with language issues and she is a member of the Bench & Bar Committee of the National Association of Judiciary Interpreters and Translators (NAJIT).  Ms. De la Vega  has done work for prominent law firms including Greenberg Traurig and Holland and Knight.  ProTranslating provides interpreting, translation services and linguistic solutions to individuals, law firms, and corporations worldwide. It offers a team of more than 100 qualified in-house linguists and a worldwide network of another 3,000 freelancers working in more than 100 languages. 888-532-7887 /www.protranslating.com

Vampires vs. Zombies – Trademark Registrations

The National Law Review’s featured guest bloggers this week are from our friends up north at Winthrop Weinstine. In keeping with all things Halloween and a bow to pop-culture,  Sharon Armstrong discusses trademark filings in relation to these spooky favorites:  

What is it with zombies these days? If recent memory serves correct, it wasn’t so long ago that a pop-culture junkie like me couldn’t mention the words “creature of the night” without some girl/tween/soccer mom swooning over the likes of one Edward Cullen, the romantic hero of Stephanie Meyer’s wildly popular Twilight series. You know who you are.

Then there was True Blood, The Vampire Diaries, and a slew of other vampire-related books, movies, parodies, and the like, including what may be one of the best fan-made mash-ups ever.

And then came the zombies. I received a copy of Pride and Prejudice and Zombies about a year ago as a gift – and suddenly it seems that zombies, like vampires, are everywhere too.

A recent review of the new television series “The Walking Dead” in the New York Times explains that “[z]ombie movies didn’t die off, but they were overshadowed by vampire mania that has dominated popular culture… Finally, perhaps as a backlash against all the girlish, gothic swooning over ‘Twilight,’ zombies are making a comeback.”

If recent filing activity at the Trademark Office is any indication, then what’s left of 2010 (and 2011) may be The Year of the Zombie. The stats are as follows:

Since September 6, 2006, the date upon which Twilight was first published, the following trademark applications have been filed with the Trademark Office:

  • 132 marks incorporating the term “zombie”
  • 118 marks incorporating the term “vampire”
  • 116 marks incorporating the term “demon”
  • 83 marks incorporating the term “troll”
  • 13 marks incorporating the term “ghoul”
  • 9 marks incorporating the term “corpse”

Of the first two categories, and since April 4, 2009, the date upon which “Pride and Prejudice and Zombies” was published, 84 applications for marks incorporating the term “vampire” have been filed and 69 applications for marks incorporating the term “zombie” have been filed.

Tellingly, the most recent applications incorporating the term “vampire” are for the mark VAMPIRES SUCK, for a variety of goods and services.

© 1994 – 2010 Winthrop & Weinstine, P. A.

About the Author:

Sharon D. Armstrong is an associate in the Intellectual Property practice group. Her practice is focused on the prosecution and enforcement of trademarks and copyrights, and Internet/domain name enforcement and acquisition. She assists clients in nearly all facets of trademark prosecution and enforcement, both foreign and domestic, administrative proceedings before the Trademark Trial and Appeal Board, and intellectual property transactions including due diligence, licensing, trademark acquisitions, settlement, consent and coexistence agreements, and other transfers of rights. Ms. Armstrong also provides assistance with intellectual property litigation and arbitration. Prior to joining Winthrop & Weinstine, Ms. Armstrong was an associate with Greenberg Traurig in Las Vegas, Nevada, a law clerk with the National Endowment for the Humanities, and an arts administrator at Los Angeles Opera. www.winthrop.com /612-604-6463

USPTO Extends and Expands Patent Application Peer Review Program

Under the category of “Who Knew” — National Law Review guest blogger James M. Singer of Pepper Hamilton LLP lets us know about  a US Patent Office Pilot Program which invites public participation in the patent application process.  

The U.S. Patent and Trademark Office has announced an additional one-year pilot of its “Peer To Patent” pilot program, which invites public participation in the patent application process.  The new program launches on October 25, 2010 and will be available through September 30, 2011.

The Peer-to-Patent program is a collaboration between the USPTO, the New York Law School, and others in which participating patent applications receive public scrutiny through comments and prior art submissions on the Peer-to-Patent website.  The peer review period begins approximately one month after the patent application is published, and it lasts for three months.  After the peer review period, the project sends the prior art and comments to the USPTO, and the USPTO advances the application earlier in its queue for examination.  Both the USPTO and the applicant can consider the public comments and submitted prior art during the examination.

Applications that participate in the program can receive the benefit of quicker examination than they would have received if they had merely waited their ordinary turn at the USPTO.  This is especially useful for technologies such as software and telecommunication inventions where the typical wait time to first Office Action often is several years.  In addition, many commenters have suggested that the fact that a patent was peer reviewed patent could be useful in situations such as challenges to validity in litigation — in order words, the fact that a patent went through the program may make a jury less likely to find the patent invalid.

According to the USPTO, the Peer to Patent Program “opens the patent examination process to public participation in the belief that such participation accelerates the examination process and improves the quality of patents. Under the pilot program, inventors can opt to have their patent applications posted on the www.peertopatent.org website. . .. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination.”

Changes in the new pilot include:

  • eligible technology classes have expanded to include software, telecommunications, and others;
  • peer review time is reduced to three months (from the previous four months);
  • up to 1,000 applications will be accepted into the program; and
  • peer reviewers may submit up to six items of prior art per application (down from the previous limit of 10).

The original Peer To Patent pilot ran from June 2007 until June 2009.  The original pilot included 189 patent applications, and it received over 600 items of prior art from peer reviewers.  To participate in the program, a pending application must not have published more than 30 days before filing a consent form, and it must fall into an eligible technology class.  Eligible classes include, among others:

  • 260 (certain subclasses) – chemistry of carbon compounds,
  • 380 – cryptography,
  • 424 (certain subclasses) – drug, bio-affecting and body-treating compositions,
  • 702, 703, 705-715, 717 and 718, which relate to certain types data processing and computers, and
  • 726 – information security.

The full list of technology classes eligible for the 2010 pilot is listed at www.uspto.gov/patents/init_events/class_subclasses_for_2010pilot.jsp.  For more details about the Peer to Patent program, visit the Peer to Patent website at www.peertopatent.org.

Copyright © 2010 Pepper Hamilton LLP

Are You Ready For the Cloud?

Meredith L. Williams of Baker Donelson is the National Law Review’s Business of Law Featured blogger.  Meredith discusses the pros and cons of cloud computing for law office operations. 

Introduction

Is cloud computing a shift or is it the next natural step in strategic business development?  Is the cloud  the right answer for your law firm or company?  Is the cloud the right answer for all applications and infrastructure or is it just a piece of the puzzle?  These are a just few of the many questions law firms and companies are asking themselves as they consider a move to the cloud.  There are many reasons why cloud computing is a very seductive solution to the cost cutting environment we find ourselves dealing with today.  However, there are many issues, legal and organizational, that must be considered to determine the validity of the cloud for each environment.

The “cloud” means different things to different people.  For most of us, we have been using cloud computing technology for years without defining the term.  Example cloud environments are extranets, legal research websites, online file storage and much more.  By definition, the cloud is a metaphor  referring to internet based computing in which applications, data, software or network functions are stored on remote servers.  There are presently three types of cloud environments:

  1. Infrastructure as a service or hardware cloud which serves as a data center,
  2. Software as a service or the software cloud, and
  3. Desktop applications operated within a hardware cloud.

Although we have been using the cloud in the past, the difference at this time is the potential of using the cloud for core business applications.

Why the Cloud?

For strategic business leaders, the cloud offers a way to minimize cost, increase mobility, prepare for disaster recovery, offer device flexibility, collaborate on demand and reduce downtime. Let us take a look at the different sections of a law firm and see how the cloud can affect the overall business functions.

In the information management world collaboration is key.  The more a firm can offer needed collaboration tools with a client, the more the client becomes entrenched in that firm culture.  The cloud provides law firms with a unique opportunity to offer clients a collaborative environment in an on-demand system.  The client can truly be connected with the law firm from anywhere with any device in the world.

Fewer applications or errors and easier upgrades are phrases application and support specialists love to hear.  The cloud environment can make them a reality.  The cloud offers software functionality to users regardless of locality or device.  Therefore, fewer setups, downloads and support hours are spent dealing with application changes and upgrades.  This new environment aids a law firm in flexibility allowing the firm to change applications as rapidly as the needs of the users change.

The main concern of most in the applications world is support.  How do current structured IT staffs support an environment when the applications are not local?  What will be the skill set of an applications and desktop support staff individual with applications in the cloud? These are areas IT departments must address before making the move to the cloud.

The cloud offers business and cost savings in a very unique way.  The upfront costs of moving to the cloud are large.  However, over time the cost savings from increased efficiency and reduced hardware, software, support and downtime help to offset the upfront costs.  The biggest hurdle for cloud computing may not be cost but instead data security.  It is easy to argue that a law firm or company can protect its data when it lives in a server room on site with a locked door but how do IT departments protect their data when it sits thousands of miles away on servers not owned by the company?  Law firms will need to determine if this is a deal breaker or is this an area of contract negotiation with the cloud provider.

What are the contractual issues?

Now that we see the potential of cost savings, flexibility, mobility and more,  we will address the contractual issues and concerns each law firm will need to consider.  The first step in any contractual negotiation is due diligence of both parties.  Law firms must evaluate news, law suits, current events, financial stability, customer references, provider longevity and any other possible information that could affect the contractual obligation fulfillment.  Only then can the contract negations begin.

The largest areas of concern in the cloud are data security and privacy. A demonstration of these concerns is seen in the 2009 complaint filed with the Federal Trade Commission (FTC) by the Electronic Privacy Information Center (EPIC) regarding cloud services of Google.  In the complaint, EPIC alleges Google did not adequately safeguard the confidential information obtained from clients.  This complaint raises serious questions for the vendor to address and draft into the contract.  Questions to ask include where the data is stored, what are the physical security measures to protect the data, is a shared resource used in storage, what is the security during transmission, what are the disaster recovery measures and what are security incident response times. In addition, questions around data migration and transition should be addressed.

Another issue to consider is legal compliance.  Highly regulated industries such as health care facilities falling under HIPAA must think twice about moving information to the cloud.  Vendors are expected to maintain the data at the same standard required of the company.  This can become a contractual deal breaker if the vendor will not agree to the higher standards.   The regulated industries affect law firms that maintain work product and client information for clients working in these regulated industries.  Law firms must now consider the standards guaranteed to their clients when moving to the cloud and verify the vendor will agree to that level of maintenance.

A point that is only just beginning to emerge in the cloud discussion is the level of control and ownership of the servers and data existing on the servers.  Questions to consider are data termination and vendor claims and rights to the data.  The control influences discovery, liability and litigation hold processes.  Negotiation can help prevent future claims of spoliation.

Performance, reliability and service features shape the day to day experience of users in the cloud.  Therefore, inquiring about disaster recovery set up, scalability of applications, process for upgrades and feature releases, suspension of services, offline capabilities, base subscription services and add-on services of applications can affect the contract obligations of the vendor, expectations of the client and most importantly cost of the contract.

Global performance and legal compliance of data across international borders are concerns for many large law firms.  Is the vendor only offering a cloud solution that is U.S. based?  This is a discussion point for the contract and can possibly be a deal breaker when adhering to EU standards of compliance.

All of the above contract negotiation points lead to the largest decision, cost.  What is included in the cost of the cloud services?  What is not included?  And the final and most important question to ask, whether the move to the cloud is a benefit if the law firm already owns the software licenses and hardware to maintain the status quo.

What will the courts be deciding?

The courts are well aware of the cloud computing movement.  In Oregon v. Bellar, 217 P. 3d 1094 (Or. App. 2009), the court took note that 69% of U.S. residents that are online utilize at least one cloud site. Due to the unique custodial issues involved with cloud computing, the cloud can present challenges to e-discovery and jurisdictional questions. Decisions concerning these issues are just starting to appear but with conflicting rulings.  The question of what the courts will decided has yet to be seen.

What will the future bring?

As we stated earlier, many of us have been using the cloud for years without calling it the cloud.  The difference surrounds the movement of core business functions such as email and document management to the cloud.  In the past, these features have been kept at a local level.  But as you see above, this is changing.  As more and more cloud providers make their way to the forefront, this movement will only increase.  The question is whether the cloud is the right solution for your law firm?

©2010 Baker, Donelson, Bearman, Caldwell & Berkowitz, PC. All Rights Reserved.

About the Author:

Meredith L. Williams is Baker Donelson’s Director of Knowledge Management.  Although trained as a lawyer, she is not actively engaged in the practice of law.  Instead, she oversees BakerNet, the Firm’s industry-leading intranet, and coordinates strategic growth on behalf of the Firm in knowledge management, competitive intelligence and technology.  Ms. Williams is widely recognized as a leading authority in knowledge management issues for the legal field, and is a frequent presenter and author on knowledge management and competitive intelligence. 901-577-2353 / www.BakerDonelson.com

 

 

Nondisclosure Agreements (NDAs): Not Just a “Standard Form.”

James M. Singer of Pepper Hamilton LLP is the featured guest blogger this week at the National Law Review.  James provides some great reminders about NDA’s Non-Disclosure Agreements. 

Many business transactions start with a nondisclosure agreement (NDA).  Often, one of the first deal points to be negotiated is whose “form” NDA will controls.  However, it’s common for both parties to overlook the fact that there is no “one-size-fits all” form NDA.

Before entering into an NDA, each party should examine the terms to ensure that the agreement makes sense for the party’s business.  Each party should ensure that the agreement adequately protects its own information, while not going so far as to subject the party to confidentiality procedures that can create issues down the road.

Issues to consider when entering into an NDA include:

  1. Nature of the disclosure: Are you more likely to be the discloser or the recipient of confidential information?  If your client will be a discloser, then a strong agreement may benefit the client. If you will only be the recipient, then you might seek a less stringent agreement.
  2. Duration of the confidentiality obligation: Some NDAs require information to be kept confidential forever. Others have a more limited term, such as 2 to 3 years.  A long term is valuable if the disclosure involves proprietary manufacturing processes, chemical compositions, or similar information.  However, if you are disclosing information that will become publicly known anyway — such as design details for a soon-to-be-sold product, or information that will be published in a patent application — then a term greater than 2 or 3 years may only benefit the other party.
  3. Consistency with corporate procedures: Each party should review the terms of the agreement to ensure that the agreement does impose obligations with which it cannot comply.  For example, if you need to disclose the information to contractors who aren’t employees, be sure that the agreement permits that.   I’ve also seen NDAs stating that all individuals who will have access to the information must sign a confidentiality agreement that specifically refers to  the NDA.  Will you require your employees to sign a new agreement that specifically refers to this agreement?  When faced with this type of obligation, consider whether or not you are prepared to comply.
  4. Purpose / Non-use clause: It’s standard for an NDA to prohibit the recipient from disclosing the information.  However, does it also restrict the recipient from internally using the information for its own benefit?  Does it clearly limit the purpose for which the recipient can use the information?  “Purpose” clauses are often filled in after all other terms are negotiated.  Parties should take care so that the purpose clause is as carefully drafted as any other clause.

These are just a few areas that parties should consider before signing a confidentiality agreement.  Rather than simply signing an ‘off the shelf” form, each party should carefully review the agreement with its attorneys to ensure that the document fits the business need.

Copyright © 2010 Pepper Hamilton LLP

About the Author:

James M. Singer is a partner in the Intellectual Property Practice Group of Pepper Hamilton LLP.  A registered patent attorney, Mr. Singer provides strategic counseling that helps businesses identify, acquire, license, protect and maximize the value of intangible assets.  Mr. Singer is the author and co-author of several publications, and he publishes IP Spotlight, a blog about topics relevant to the intersection of business and intellectual property law, at http://www.ipspotlight.com/. He also is a frequent public speaker on issues relating to technology and the law, and is recognized in Intellectual Asset Management (IAM) Licensing 250: The World’s Leading Patent and Technology Licensing Lawyers 2010. 412-454-5023 /www.pepperlaw.com

An Analysis of South Africa’s Mental Health Legislation

The National Law Review is pleased to congratulate Natalie LaToya McCrea of American University- Washington College of Law winner of the Fall 2010 Law Student Writing contest.  

If one were to measure a society’s health by its historical environment, then something can indeed be said of South Africa. This nation is known for its long abhorrent history with apartheid entrenched with a political and human rights struggle. In 1995, the world witnessed the evisceration of apartheid and the birth of a new democratic South Africa. In light of the struggle endured by a visible portion of the South African population, a question asked is, what about the forgotten and somewhat invisible individuals, those who suffer with mental illness. The purpose of this work is to discuss South Africa’s mental health legislation, namely Mental Health Care Act, No. 17 [MHCA 2002], and conduct a comparative study with the African Banjul Charter, the UN Principles for the Protection of Persons with Mental Illness [MI Principles], and the World Health Organization Principles.

Historical Mental Health Legislation

While South Africa has had numerous mental health statutes, our discussion will commence with the 1973 Act.

Mental Health Act 18 of 1973 [MHA 1973] grew out of a “public panic” that ensued after the assassination of then Prime Minister, Dr. Hendrik French Verwoerd by someone deemed to be mentally ill.[i] A Commission that inquired into his death concluded that many assassinations “are committed by mentally disordered persons.”[ii] The Commission’s conclusion spawned a proposed amendment, which eventually culminated into MHA 1973.[iii]

Scholars and psychiatrists have noted that MHA 1973 did not have an individual rights concern. Rather, its primary focus was on patient control and treatment, along with the “welfare and safety” of the society.[iv] The fact that this Act was propelled during the apartheid era cements the view that the human rights of the patients were not necessarily the priority. Specifically, MHA 1973 has been criticized because (i) it only required a reasonable degree of suspicion to be certified to a mental institution;[v] (ii) individuals could be denied their freedom and placed in a mental facility based on prejudices and vendettas.[vi] In fact, finding someone mentally incapable was sometimes utilized solely for political means in the apartheid era. Freedom fighters were often silenced by being placed in a mental facility; (iii) once deemed mentally ill and certified, patients went without the assistance of the law, and could spend a considerable amount of time in the mental institutions against their will[vii]; and (iv) patients did not have a significant right of appeal or representation.[viii]

According to the South Africa Federation for Mental Health, while MHA 1973 was in existence, it facilitated disproportionate mental health care based on race, with blacks receiving the least care. In effect, the MHA 1973 provisions did not promote personal autonomy, dignity or justice for individuals with mental illness.  Instead, it highlighted a paternalistic principle which allowed mentally ill patients to be alienated, stigmatized and disempowered. It became apparent that MHA 1973 needed to be reconsidered and changed.

South Africa’s Present Mental Health Legislation

South Africa entered into a state of transition after the presidential election of Nelson Mandela in 1994. The nation was moving from a repressive regime into a new democratic era. According to the World Health Organization [WHO], Mandela’s administration was particularly focused on ridding the nation of all apartheid polices, and instituting new ones that met the needs of groups previously disadvantaged.

The new South Africa adopted its Constitution with an accompanying Bill of Rights on May 8, 1996, which came into force on February 7, 1997. It became even more evident that MHA 1973 needed to be brought in step with the newly adopted principles of the South African Bill of Rights.[ix] Specifically, it needed to reflect the rights expounded in Chapter 2, §§§ 9, 10, and 12; recognizing respectively, issues of equality; the right to the respect and protection of human dignity; and the freedom and security of person.

South Africa’s new Mental Health Care Act (MHCA 2002) was passed in 2002 and promulgated on December 15, 2004.[x] It came in force in line with other positive international initiatives in mental health legislation, such as the London Mental Health Act 2007, The Scotland Mental Health (Care and Treatment) 2003, and the Jamaica Mental Health Act 1998.  In effect, MCHA 2002 seeks to: (1) shift the system from a past custodial approach to one encouraging community care; (2) make certain that appropriate care, treatment and rehabilitation are provided at all levels of the health service; and (3) highlight that individuals with mental disabilities should not be discriminated against, stigmatized or abused.[xi]

MCHA 2002’s Key Provisions

Mental illness is defined under the Act as a “positive diagnosis of a mental health related illness in terms of accepted diagnostic criteria” made by a mental health care practitioner authorized to make such diagnosis.[xii] The Act outlines the rights and duties to mental health patients, and highlights that their human dignity and privacy must be respected; that they should not be unfairly discriminated against because of their mental status; and that they should be protected from “exploitation, abuse and any degrading treatment” [xiii]

Involuntary Treatment:

Regulation No. 27117 of 2004 governs MCHA 2002.[xiv] This Regulation and § 33 of the Act, states that in order to commence a proceeding to have someone involuntarily committed, “an application must be made to the Head of a Health Establishment (HHE) by a spouse, next of kin, partner, associate, parent or guardian”, who must have seen the person within the past seven days.[xv] Once the application is received, the HHE must have the person examined by two mental health care practitioners who perform independent assessments of the patient, and must report their findings and recommendations.[xvi] If the assessments of the two practitioners are different, then the HHE must have the patient assessed by another practitioner.[xvii] The HHE can approve an application only if the two mental health care practitioners agree together that involuntary care is needed.[xviii]

MHCA 2002 is clear that only individuals suffering from mental illness are eligible for involuntary care.[xix] According to the Act, an involuntary mental health user “must be provided with care, treatment and rehabilitation at a health establishment if at the time of application, there is a reasonable belief that the mental health care user has a mental illness,” and is likely to cause serious harm to their person or others.[xx]

If the HHE recommends involuntary care, treatment and rehabilitation, the patient must be admitted to a health establishment within 48 hours.[xxi] The HHE must then arrange for the assessment of the patient’s physical and mental health status for 72 hours.[xxii] After the 72-hour assessment, based on the medical health care practitioner’s reports, the HHE must decide if the patient requires further involuntary care, treatment and rehabilitation services as an inpatient. If the HHE determines that the patient does not require further treatment, care or rehabilitation, the patient must be discharged immediately, unless the patient gives consent to further care. Invariably, depending upon the HHE’s determination, the patient can be discharged or have their status changed to a voluntary inpatient or outpatient. [xxiii]

Voluntary Treatment:

MHCA 2002 directs that an individual who voluntarily submits to a mental health facility for care and treatment, and who consents to such care, is “entitled” to care and treatment, or referral.[xxiv]

Procedural Protections and Precautions:

MHCA 2002 incorporates several procedures, and precautions to ensure that patient’s rights are fully protected. One notable precaution is that persons directed by the HHE to examine the prospective patient must be qualified mental health practitioners.[xxv]

Another important precaution and procedural protection is the establishment of the Mental Health Review Boards, which are to be constituted in every province.[xxvi]The primary aim of the Boards is to ensure that the rights of the prospective patients are not violated. The Boards must be comprised of one magistrate, one attorney, and a mental health practitioner.[xxvii] Where the HHE subjects an involuntary patient to the 72 hour assessment, and concludes that the patient should receive further involuntary care, treatment and rehabilitation, the HHE must submit a report within 7 days of the expiration of the 72-hour assessment requesting the Board to approve further involuntary care.[xxviii]

One striking element of the Act is that while the Board considers the HHE’s decision to continue involuntary treatment, all (the applicant, the mental health providers), except for the reluctant patient is afforded the opportunity to present their representations to the Board.[xxix] Additionally, it is interesting that after the Board makes its deliberations, there is no mention of them sending a notification of the results to the potential patient. The Act, however, notes that decision letters are sent to the HHEs and the applicant who requested that the patient be treated.[xxx] Once the Board decides to adhere to the HHE’s assessment that the involuntary patient should continue to be so treated, the Board must submit their decision for judicial review and send all documentations to the High Court for consideration of the matter. The Court has a month to consider.[xxxi]

The aforementioned concerns are somewhat ameliorated by the Act’s provision that mental health care users have a right to legal representation, and to appeal to the Board about the decisions of the HHE to continue involuntary treatment.[xxxii]One problem, however, is that the HHE’s decision in favor of involuntary care is not submitted to the patient, but to the applicant.  Since the reluctant patient was not notified of the HHE’s decision in the first place, it is rather difficult for the patient to submit an appeal.  If the Board finds for the reluctant patient, s/he must be released immediately. If the Board finds in favor of the HHE’s decision, the Board must submit their decision to the High Court for judicial review.[xxxiii]

Another important procedural protection applicable to both voluntary and involuntary mental patients is that their conditions must be periodically reviewed, and annual reports must be submitted to the Board for review.[xxxiv]

MHCA 2002 Compliance with Other Human Rights Principles

The African Banjul Charter on Human and People’s Rights was ratified by South Africa on June 9, 1996, and accordingly, its principles are binding on South Africa. The Charter calls for the protection of the dignity of mental health patients; their equality before the law; their right not to be deprived of their liberty and security; and the right to obtain good mental health. [Articles 5, 3, 6, 16, respectively]. Some of these proscriptions were called to the forefront before the African Commission on Human and Peoples’ Rights in the landmark case, Purohit and Moore v. Gambia No. 241/2001 (2003). The Commission held that all states party to the Banjul Charter should guard and protect the rights of the mentally disabled to dignity and the enjoyment of life.[xxxv]

South Africa’s MHCA 2002 recognizes and subscribes to the importance of protecting individuals with mental illness.[xxxvi] The Act further recognizes that this protection is called for in the state Constitution.  There is a clear indication that South Africa wants to protect the rights and interests of the mentally ill.[xxxvii] The human dignity and respect principles evoked in Purohit are enforced and protected in §§8, 10 and 11 of the Act.

The Principles for the Protection of Persons with Mental Illness and the Improvement of Mental Health Care (MI Principles)[xxxviii]

As illustrated below, MHCA 2002 comports with many of the tenets of the United Nations’ MI Principles:

Chapter III of the Act is a reflection of MI Principle 1 enumerating some basic rights for the mentally ill, such as respect for human dignity and privacy;[xxxix] the consent to care factor;[xl] and rules against discrimination, exploitation and abuse.[xli] MI Principle 4 is reflected in Section 12 of the Act. Specifically, similar to the MI Principles, MHCA 2002 § 12 directs that a determination of an individual’s mental health status should not be based on their socio-political, cultural or economic background. The MI Principle of Notice of Rights (Principle 12) can be found in § 17 of the Act providing that mental health patients must be informed of their rights before any administration of care or treatment.  The Act follows MI Principle 16 on involuntary admission in that it considers the dangerousness factor before committing an individual involuntarily. The Act, like Principle 16, recognizes the importance of the concurrence of two mental health practitioners, and that involuntary preliminary treatment should be brief pending a review.[xlii] Additionally, both the Act and the MI Principles contain provisions for the creation of Review Boards [Principle 17; MHCA § 18]. They both also have provisions for periodical reviews of involuntary patients [Principle 17, MHCA § 30]; and the right of the patient to appeal [Principle 17, MHCA §29]. The MI Principle of monitoring is reflected in the Act in the form of judicial reviews in §§ 34, 35, 36 and 37.

The World Health Organization Principles

According to the WHO, South Africa’s MHCA 2002 “is consistent with international human rights standards…and appears to be a highly appropriate and important milestone in the development of the mental health system in South Africa.[xliii]

Many of the principles reflected in MHCA 2002 are in line with the WHO’s concept that the aim of a mental health legislation is to “protect, promote, and improve” the lives of the mentally ill.[xliv] Significantly, WHO’s concepts are reflected in a number of the Act’s principles, namely that mental health services should offer care, treatment and rehabilitation; and that recipients should be treated with the least possible restriction on their freedom.

Concerns with the New Mental Health Care Legislation

Despite the fact that MHCA 2002 represents a major milestone in South Africa’s history, the WHO has noted that it does not appear to be enough to bring forward major reforms greatly needed in South Africa’s mental health system.[xlv] In fact scholars have commented that the system is plagued with human resource constraints and infrastructure restraints, and thus implementation of the Act’s requirement in community and district hospitals is problematic.[xlvi] According to Moosa, South Africa has a limited amount of specialized psychiatric hospitals, and those that are available are ill equipped to properly abide by the 72-hour provision. Additionally, many South African psychiatric hospitals do not separate the patients by age groups; and there is a significant lack of beds.[xlvii] Other problematic areas that undermine the Acts successful implementation are lack of proper training, inadequate skills; and a lack of proper understanding of the Act.[xlviii]

Conclusion

South Africa’s new mental health care act is an important instrument implemented to advocate for the best interest of mental health care users. Although there are problems, one must remember that the nation had a horrid past, and remnants of the past system are still ingrained therein. The redeeming factor is that South Africa has made the step to correct the deficiency and has moved towards enabling its citizens to have access to obtaining optimal mental health care.

[i] Nicholas Haysom, Martin Strous, and Lloyd Vogleman, The Mad Mrs. Rochester Revisited: The involuntary confinement of the mentally ill in South Africa, 6 SAJHR 341, 343 (1990).

[ii] Id.

[iii] Id.

[iv] Burns, JK Implementation of the Mental Health Care Act (2002) at district hospitals in South Africa: Translating principles into practice, S Afr Med J 2008; 98 46-49.

[v] Id.

[vi] Id.

[vii] Id.

[viii] Id.

[ix] Bonthuys, Elsje, Involuntary Civil Commitment and the New Mental Health Bill,118 SALJ 667 (2001).

[x] Mental Health Care Act 17 of 2002 (S.Afr.),http://www.info.gov.za/view/DownloadFileAction?id=68051

[xi] MYH Moosa and FY Jeenah, Involuntary treatment of psychiatric patients in South Africa, 11(2)Afr Journal of Psychiatry, 109, 110 (2008).

[xii] Mental Health Care Act 17 of 2002 Chapter 1, § xxi (S. Afr.).

[xiii] Id. atChapter 3, §§§ 8, 10 and 11.

[xiv] http://www.info.gov.za/gazette/notices/2004/27117.pdf

[xv] Mental Health Care Act 17 of 2002 §33 (1,2) (S. Afr).

[xvi] Id. at § 33(4,5).

[xvii] Id. at § 33(6).

[xviii] Id. at §33(7).

[xix] Id. at § 32.

[xx] Id.

[xxi] Id. at §33(9).

[xxii] Id. at § 34.

[xxiii] Id. at §34(3).

[xxiv] Id. at §§ 25, 26.

[xxv] Id. at §27(4), §33(4).

[xxvi] Id. at § 18.

[xxvii] Id. at § 20.

[xxviii] Id. at §34(3)(c).

[xxix] Id. at §34(7)(a).

[xxx] Id. at §34(7)(b).

[xxxi] Id. at §34(7)(c).

[xxxii] Id. at §§ 15, 35.

[xxxiii] Id. at §35(3)(4).

[xxxiv] Id. at §§30, 37.

[xxxv] Michael L. Perlin, Arlene S. Kanter, Mary P. Treuthart, Eva Szeli & Kris Gledhill, INTERNATIONAL HUMAN RIGHTS and COMPARATIVE MENTAL DISABILITY LAW840-841 (Michael L. Perlin eds., 2006).

[xxxvi] Mental Health Care Act 17 of 2002 Preamble (S. Afr).

[xxxvii] Id. at §4(c)(d).

[xxxviii] The Protection of Persons with Mental Illness and the Improvement of Mental Health Care, G.A. Res. 46/119, U.N. Doc. A/Res/46/119 (Dec 17, 1991).

[xxxix] Mental Health Care Act 17 of 2002 §§8, 13 (S. Afr).

[xl] Id. at §9.

[xli] Id. at §§10, 11.

[xlii] Id. at §§26, 33.

[xliii] WHO, Mental Health Policy Development and Implementation in South Africa: A Situation Analysis, 10 [January 31, 2008].

[xliv] Id.

[xlv] Id.

[xlvi] MYH Moosa and FY Jeenah, Involuntary treatment of psychiatric patients in South Africa, 11(2)Afr Journal of Psychiatry, 109, 110 (2008).

[xlvii] Id.

[xlviii] Burns, JK Implementation of the Mental Health Care Act (2002) at district hospitals in South Africa: Translating principles into practice, S Afr Med J 2008; 98 46-49.

© 2010 Natalie McCrea

About the Author:

Natalie Latoya McCrea received her J.D. from Syracuse University College of Law in 2009. She also holds a Master’s Degree in International Affairs from Maxwell School of Citizenship and Public Affairs at Syracuse University. She is currently pursuing a LLM with a specialty in international business from American University Washington College of Law.  www.wcl.american.edu / 347-886-6900

 

Avoiding Ambiguity in Patent License Agreements

National Law Review featured guest blogger James M. Singer of Pepper Hamilton LLP provides a great analysis of why companies need to take a very close look at the wording in their licensing agreements. 

Recent publications indicate that intangible assets account for between 70 percent and 80 percent of the overall value of United States companies.  For companies that are involved in intellectual property licensing, a significant portion of this value is derived from licensing revenues.  Thus, the agreements in which licenses are granted must be carefully drafted to ensure that agreement clearly explains the rights and obligations of each party.

Unfortunately, too often companies start a license discussion with a form document that does not anticipate issues that the parties may encounter during the licensing relationship.  In addition, a slight ambiguity in the agreement can create headaches for both parties down the road.

In early November I will have the opportunity to speak about patent licensing at a CLE seminar, and when preparing my comments I started thinking about situations that I’ve seen where just a few words in the agreement caused the parties to significantly disagree about the scope of the license, the payment obligations, or other key terms.

For example, when licensing a patent, the licensee also may expect to receive a license to general categories of “related know-how” or “related intellectual property.”  For some companies, it may be relatively easy to identify exactly what falls into these general categories.  However, other licensors — such as large companies, research institutions, and contract manufacturers — may have a wide variety of projects that could be considered “related” to the licensed IP.  These licensors should avoid general categories like “related IP”, or at least narrowly define “related IP” to that developed by specific individual, at a specific time, or under specific conditions.

Another example can be found in a 2009 Seventh Circuit court decision of Sunstar Inc. v. Alberto-Culver Company, which reviewed an agreement whereby Alberto-Culver granted Sunstar a senyoshiyoken in certain trademarks.  The parties differed as to whether the word senyoshiyoken — a Japanese word essentially meaning “exclusive use right” — allowed Sunstar to vary the trademark’s font. The court analyzed the agreement and the term’s Japanese meaning and concluded that the right granted was broad enough to permit the licensee to change the font.

In a 2009 Federal Circuit decision, Corebrace LLC v. Star Seismic LLC, the Court considered whether a license to “make” a patented invention inherently includes the right to have the invention made by a third party contract manufacturer.  The court analyzed its own precedent, along with California state law and concluded that a “have made” right is implicit in a right to “make, use and sell” an invention unless the agreement expressly says otherwise.

The licensing of intangible assets is big business.  Situations such as these show the importance of carefully drafting license agreements to avoid ambiguity.

Unless the agreement is clear, the parties can find themselves interpreting the agreement in vastly different ways, with a significant revenues riding on whose interpretation is correct.

Copyright © 2010 Pepper Hamilton LLP

About the Author:

James M. Singer is a partner in the Intellectual Property Practice Group of Pepper Hamilton LLP.  A registered patent attorney, Mr. Singer provides strategic counseling that helps businesses identify, acquire, license, protect and maximize the value of intangible assets.  Mr. Singer is the author and co-author of several publications, and he publishes IP Spotlight, a blog about topics relevant to the intersection of business and intellectual property law, at http://www.ipspotlight.com/. He also is a frequent public speaker on issues relating to technology and the law, and is recognized in Intellectual Asset Management (IAM) Licensing 250: The World’s Leading Patent and Technology Licensing Lawyers 2010. 412-454-5023 / www.pepperlaw.com

Inside Counsel Transformative Leadership Awards – Entry Deadline: October 29, 2010

Inside Counsel is inviting you to help them shine the spotlight on law firms and law departments that have achieved demonstrable results related to increasing opportunities for the empowerment of women in law by submitting a nomination for the 2011 Transformative Leadership Awards.  The Awards honor women general counsel and law firm partners who have demonstrated a commitment to advancing the empowerment of women in corporate law. 

If your firm or legal department has made momentous progress in elevating women to leadership positions, developed significant paths of advancement for women, or has a considerable number of women on key executive, compensation or equity partnership committees, then click here to nominate them for an award.

InsideCounsel magazine’s Editor-In-Chief, Cathleen Flahardy, in conjunction with Allstate Insurance Company’s SVP, General Counsel & Chief Legal Officer, Michele Coleman Mayes, will again co-chair the National Awards Committee to select the 2011 winners.

In 2011, seven total awards are will be presented: three awards for in-house counsel, three awards for law firms and one shared award for both law firm and in-house counsel.