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Fish's Intellectual Property Law Essentials

Welcome to Fish’s IP Law Essentials,
presented by the Blog Brigade.

Fish & Richardson’s IP Law Essentials is a comprehensive survey of IP law brought to you by the experts at the world’s leading IP firm. Whether you are new to IP or you are a seasoned practitioner in need of a refresher, Fish’s IP Law Essentials is your go-to resource. Over the coming weeks and months, the attorneys of the Fish Blog Brigade will share some of the substantive and practical knowledge they have developed over their many years of experience. The topics we cover will span the full range of IP law, including patent, trademark, copyright, post-grant, ITC, and trade secret.

Featured Blogs

  • Blockchain and Cryptocurrency: What is Blockchain Technology?
    Blockchain and cryptocurrency technologies are rapidly expanding throughout the world – and with that rapid expansion has come a growing interest in IP protection for blockchain and cryptocurrency inventions. By Tracea Rice, Frank Gerratana, Kenneth Hoover.
  • Unlocking California’s Trade Secret Identification Requirement Under California Code of Civil Procedure Sec. 2019.210 – Part 2
    California trade secret law presents a unique statutory framework among state and federal trade secret laws that requires plaintiffs to identify the misappropriated trade secrets before discovery commences. This post explores three leading California appellate court opinions interpreting the requirements of § 2019.210. By Seth Sproul, Tucker Terhufen.
  • Stipulated Protective Orders During Patent Litigation
    Discovery in patent cases often requires parties to produce confidential technical, business, and financial information. To safeguard this sensitive information, courts issue protective orders limiting who can access it, under what conditions, and for what purpose. By Rodeen Talebi, Katie Prescott.
  • An Overview of Utility Patents in the United States
    A utility patent is a patent that covers “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” It is the most prevalent type of patent in the United States. We answer common questions about utility patents, including how to get a utility patent and the term of a utility patent. By Lance Wyatt, Esha Bandyopadhyay.
  • Antitrust Issues with “No-Poaching” Agreements
    A no-poaching agreement is a contract not to recruit another company’s employees. Although companies might be wary of employees departing with trade secrets, they should be aware that no-poaching agreements are antitrust violations. This article presents alternative solutions to no-poaching agreements. By DJ Healey, Christian Chu, Sushil Iyer, Kevin Gray.
  • Watch Where You Launch: Existing Space Laws Complicate Earthly IP Rights
    International treaties regarding space have not been revisited since the 1980s, and none speak to intellectual property. With the rise of commercial space travel, questions about IP in space are inevitable. We propose guidelines for resolving the uncertainty in this space. By Eda Stark, Christopher Green.
  • Introduction to Patent Regulations
    Properly assessing whether a patent should issue and whether a patent should continue to exist, is crucial when maintaining the balance between inventors and the public. In this piece, we take a closer look at the governing bodies in the United States responsible for deciding whether a patent should issue and whether a patent should continue to be valid. By Philip Chen and Esha Bandyopadhyay.
  • What to Consider When Selecting an Expert Witness
    Before choosing an expert, it is important to consider expertise, testifying experience, conflict of interest, prior exclusion orders, and other important factors. This post provides a checklist for selecting an expert. By Taylor Caldwell and Joanna Fuller.
  • Experts in Patent Cases: Who They Are and Why to Hire Them 
    Experts in patent cases help investigate the facts, develop a case strategy, and explain complex technical and economic issues to a judge and jury. In this post, we describe the types of experts that may appear in a patent case.  By Taylor Caldwell and Joanna Fuller.
  • Outer Space Treaty & Beyond: Do Existing Space Laws Put an Astronomical Barrier to Private IP Rights in Space?
    Earlier this year, DoubleTree by Hilton baked the first cookie in space. Perhaps a step furthering the 1960s dream of Hilton’s Lunar Hotel, the team has since brought the cookies back to Earth. The Hilton cookie experiment raises interesting questions of intellectual property rights in space. For example, does Company A with a patented method of baking a delicious space cookie have a claim against Company B that bakes a cookie in space using Company A’s patented baking method? What about inventions made in space—what protections do they have once they are brought back to Earth? Are there laws in space that govern the answers to these questions? By Eda Stark and Christopher Green.
  • What is Patent Law?
    The United States patent system is built on a “carefully crafted bargain” between inventors and the public. In exchange for a disclosure teaching the public how to make and use an invention, the federal government grants the inventor an exclusive right to protect the invention for a limited time. In this piece, we explore the laws governing patents. By Philip Chen and Esha Bandyopadhyay.
  • Depositions for Inter Partes Review: How Do They Work?
    While depositions in district court litigation are primarily focused on gathering facts and preparing impeachment, deposition testimony taken in an IPR is actual admitted testimony. As such, deposing attorneys must carefully consider what questions to ask a witness. By Rick Bisenius and Dan Smith.
  • Everything You Need to Know About Patent Maintenance Fees
    Patent maintenance fees are mandatory fees that must be paid to the United States Patent and Trademark Office (“USPTO”) at certain time points after a patent issues in order to keep a utility patent in force. We discuss when maintenance fees are due, consequences for not paying maintenance fees, and small entity vs. large entity fees. By Sean Daley and Lawrence Jarvis.
  • How To Present a Persuasive Opening Statement in a Patent Jury Trial
    Litigators have long understood that jurors’ opinions at the end of opening statements color, and correlate strongly with, how they interpret the evidence at trial. This blog post examines the limitations on statements that can be made during opening and strategies for working within those rules to effectively present the scientific evidence without losing the jury’s support. By Scott M. Flanz & Douglas E. McCann.
  • Best Practices: Protecting Your Trade Secrets in the M&A Virtual Data Room
    Every day, businesses large and small are seeking to be acquired, in whole or in part. Naturally, potential buyers of a business will be keenly interested in the nature and value of the seller’s assets, including its IP assets, chiefly patents and trade secrets. We discuss key points for the parties to bear in mind when crafting NDAs for the M&A process and constructing the M&A virtual data room. By Tommy Jacks and David Morris.
  • How Biosimilars Are Approved and Litigated: Patent Dance Timeline
    Biosimilar applicants have a number of choices to make on the path to a commercial biosimilar product. This blog outlines the path to biosimilar approval and launch and explains some of the decisions that a biosimilar applicant must make along the way. By Cheryl Wang, Nicole Williams, Kayleigh McGlynn, Grant Rice, Jenny Shmuel.
  • Introduction to Patent Claims
    A patent claim is the single most important part of the patent rights, as it defines the scope of what is covered. In this posting, we explain the basic components of a patent claim to help you understand how to write a patent claim and how to (in part) interpret a patent claim. By Sean Daley and Laura C. Whitworth.
  • ITC Litigation: How Discovery in the ITC Is Different from Federal Court
    Apart from the speed at which parties are expected to gather evidence, however, there are some key differences in discovery in an ITC proceeding as opposed to district court litigation. Here, we highlight some of the most notable differences. By Jacqueline Tio, Joe Dorris, and Monty Fusco.
  • Introduction to Patent Term Extensions (PTE)
    One way of extending patent term is called “Patent Term Extension” or “PTE.” The specific rules and regulations governing PTE are complex. Here, we provide a brief, high-level overview of the requirements for obtaining PTE and the PTE process. By Tina Murphy, Jenny Shmuel, and Terry Mahn.
  • Is “Reverse Engineering” Misappropriation of Trade Secrets?
    Reverse engineering refers to the process of working backward from an available product to understand what its parts are, how it functions and/or how it was made. Is reverse engineering allowed under state and federal trade secret law? Can parties contract away the right to reverse engineer? By Katie Prescott and Autumn Wu.
  • An Introduction to Patent Due Diligence
    A patent due diligence analysis can help you determine the value of your own patent portfolio, including whether you can monetize your patents through licensing, enforcement or divestment. Conversely, it allows you to assess and mitigate the infringement risks posed by a competitor’s patents or the patents of another party. By Michael Autuoro and Veena Tripathi.
  • Trade Secret Litigation v. Patent Litigation: Similarities, Differences, and Interplay
    What are the similarities and differences between trade secret and patent litigation? As both patents and trade secrets often constitute key elements of a company’s IP portfolio, it is crucial to understand what a litigation in either or both of these contexts would mean for you. By Bobby Hampton and Esha Bandyopadhyay.
  • Trade Secrets and Patents: Similarities, Differences, and Interplay
    The underlying purpose of trade secret and patent laws is the same: to help inventors and owners protect their intellectual property, the fruits of their labor. However, patents and trade secrets are intended to protect different things, are obtained differently, and can be lost differently. By Bobby Hampton and Esha Bandyopadhyay.
  • What is the PTAB and Who are the Judges?
    Your inter partes review (“IPR”) was instituted, you’ve gone through discovery, and now finally your oral argument before the Patent Trial and Appeal Board (“PTAB”) is approaching. But who will actually sit on the bench? By Ryan Petty, Rick Bisenius, and Dan Smith.
  • ITC Litigation: Domestic Industry Requirement
    The “domestic industry” requirement is unique to Section 337 actions and not found in typical IP litigation. What is the domestic industry requirement and how can a party satisfy (or fight) it? By Joe Dorris, Jacqueline Tio, and Monty Fusco.
  • The Patent Litigation Process: The Complaint
    Patent litigation begins when a plaintiff files a complaint against a defendant. Pay attention to several essential elements of the complaint: the parties, the jurisdiction, the venue, and the factual allegations. By Adil Shaikh and Michael Zoppo.
  • ITC Litigation: The Section 337 Investigation Timeline
    This blog presents a timeline of a typical Section 337 investigation schedule, which, if instituted, will take about a year before the Commission makes its final determination on whether violation exists and warrants relief. By Elizabeth Connors, Jacqueline Tio, and Monty Fusco.
  • Anatomy of a Patent
    There is a great deal of information packed into a patent. We provide a road-map to reading a patent. By James Sebel and Sean Daley.
  • Navigating Fact Discovery in a Patent Case
    Discovery is critical to proving a case. We discuss common discovery tools that parties use to obtain evidence: requests for production or inspection, interrogatories, requests for admission, depositions, and subpoenas. By Rodeen Talebi and Katie Prescott.
  • Is it Too Late to File a Misappropriation of Trade Secrets Suit?
    If you assert a trade secret claim after the statute of limitations has passed, it could be dismissed. When is the statute of limitations for a misappropriation of trade secrets claim? By Katie Prescott and Autumn Wu.
  • Unlocking California’s Trade Secret Identification Requirement Under California Code of Civil Procedure Sec. 2019.210 – Part 1
    California trade secret law requires plaintiffs to identify the misappropriated trade secrets before discovery commences. This post explains the genesis and purpose of the trade secret identification requirement. By Seth Sproul and Tucker N. Terhufen.
  • Oral Hearings at the PTAB: What to Expect
    Oral hearings before the Patent Trial and Appeal Board (“PTAB”) share some similarities with federal district court litigation, but they also include important differences. By Ryan Petty, Rick Bisenius, and Dan Smith.
  • ITC Litigation: Can You Be Sued at the ITC?
    The ITC has far-reaching jurisdictional authority that can cover both domestic and international respondents. Since jurisdiction exists over imported articles, U.S. companies can fall under the ITC’s purview in several ways. By Elizabeth Connors, Jacqueline Tio, and Monty Fusco.
  • Visual Artists Rights Act Protects Even Transient Art in the Absence of an Explicit Waiver
    While street artists should be aware of their rights under copyright law, building owners should also be aware that authorizing street art on their buildings without an agreement in place can carry liability. By Ryan Petty, John S. Goetz, and Kristen McCallion.
  • What are the Different Types of Patents?
    What is the difference between utility patents, design patents, and plant patents? By Lance Wyatt and Esha Bandyopadhyay.
  • Safeguarding Secrecy: Taking “Reasonable” Measures to Protect Trade Secrets
    In order to enforce trade secret rights, a trade secret owner must show that it used reasonable measures to guard its trade secrets. This blog looks at what counts as “reasonable measure” and lists seven best practices for guarding trade secrets. By Felix Eyzaguirre and Esha Bandyopadhyay.
  • Introduction to Biologics and Biosimilars
    Biologics are a fast-growing class of therapeutic compounds. This blog explores the differences between biologics vs. small molecule drugs, biosimilars vs. generics, and biosimilars vs. interchangeables. By Jenny Shmuel, Kayleigh McGlynn, Michael Anderson, Cheryl Wang, Tracea Rice.
  • Best Practices: How to Protect Trade Secrets From Loss Through Departing Employees
    Many employees have access to company confidential and trade secret information. Here’s how to make sure departing employees do not take trade secrets with them. By Tommy Jacks and David Morris.
  • Best Practices: HR Risk Management to Avoid IP Theft Liability
    A company should exercise caution when hiring new employees to avoid importing trade secrets from a competitor. By Tommy Jacks and David Morris.
  • Post-Trial Motions: No Rest for the Post-Trial Attorney
    Whether you won or lost at trial, it is crucial to consider post-trial motions. This blog provides an overview of the types of post-trial motions a party should consider filing, and/or should expect to be filed against it. By Alana Mannige and John Thornburgh.
  • Overview of Approaches to Compulsory Licensing
    Typically, a patent owner has the right to exclude others from practicing its patent. But can a patent owner be forced to license it? By Brian Coggio, Sushil Iyer, and Cheryl Wang.
  • What You Need to Know About Motion Practice You Probably Learned in Kindergarten
    Motions are a fundamental tool of litigation. This blog discusses motions that arise before and during trial. By Robert Ehrlich and Benjamin C. Elacqua.
  • I’m Ready to Sue for Patent Infringement—But First, Do I Have the Right Plaintiffs?
    Choosing the proper plaintiffs requires considering patent title, licenses, damages, and more. By Jeremy T. Saks and Susan Morrison.
  • What Discovery is Available during Inter Partes Review?
    Discovery in an IPR is relatively limited compared to district court discovery. This keeps the proceedings narrowly focused and on track to complete within the statutory one-year timeline. By Ryan Petty, Rick Bisenius, and Dan Smith.
  • ITC Litigation: The Rise in Popularity of Section 337
    This blog traces the roots of ITC Section 337 actions throughout history and summarizes notable historical facts concerning the ITC. By Jacqueline Tio, Joe Dorris, and Monty Fusco.
  • They Came from Earth – IP Rights in Outer Space
    Eda Stark and Chris Green launch their blog series on intellectual property rights in space with a discussion of the creation and evolution of the Space Act.
  • What is Patentable Subject Matter?
    Patent eligibility is the first of three hurdles to be cleared in obtaining a patent (the other two are novelty and non-obviousness). This blog is the start of a series on what makes an invention patentable subject matter. By Ricardo Bonilla and Alex Pechette.
  • Bankruptcy and COVID-19: Issues for Licensors
    How can a bankruptcy filing by an IP licensee affect a non-debtor licensor? By Lance Wyatt and J. Kevin Gray.
  • Bankruptcy and COVID-19: Issues for Licensees
    How can a bankruptcy filing by an IP licensor affect a non-debtor licensee? By Lance Wyatt and J. Kevin Gray.
  • Seven Benefits of Copyright Registration
    Although copyright registration is optional, copyright owners should consider registering their copyrightable works sooner rather than later to take full advantage of the benefits conferred by registration, especially if infringement is a concern. By Vivian Cheng.
  • Where Juries Come From
    In this series, we’ll give you some ideas about how to select a good jury. But first, where do juries come from?” By Alex Kykta, Kate Reardon, Cheryl Wang, and Doug McCann.
  • E-Discovery Sanctions Traps in the Remote Workplace
    One of the most daunting challenges in litigation is responding to e-discovery requests. With the transition to the remote workplace, it is more important than ever to establish preservation policies and practices that will preempt serious e-discovery sanctions. By Tommy Jacks and David Morris.
  • Monetizing Patents through Partnerships
    Universities have become increasingly adept at monetizing their patents through partnerships with outside experts, and savvy entrepreneurs should be aware of these partnership opportunities. By Alexander Kykta and Benjamin C. Elacqua.
  • Injunctions: Using Patents to Stop Competitors
    Although money damages may seem like an obvious first choice, patent owners (or licensees with a right to sue) should also consider seeking equitable relief through an injunction. This blog highlights three popular options for getting an injunction. By Benjamin Elacqua and Felix Eyzaguirre.
  • When Should I File an IPR during Litigation?
    You have been sued for patent infringement and decided to challenge the validity of the patent at inter partes review (IPR). This blog discusses some important factors for deciding the timing of an IPR. By Ryan Petty, Rick Bisenius, and Dan Smith.
  • Can I Copyright My Logo?
    To be eligible for copyright protection, a logo must be an original work of authorship with a minimal level of creativity. This blog looks at three recent decisions from the United States Copyright Office Review Board concerning what can make a company logo copyrightable. By Ryan Petty, John S. Goetz, and Kristen McCallion.
  • Trade Secrets: What are They and Do They Impact Me?
    Almost every business, no matter its size or industry, has information that could be a trade secret. This blog explains the fundamentals of what “trade secret” means. By Felix Eyzaguirre and Esha Bandyopadhyay.
  • ITC Litigation: How do I file an ITC Complaint?
    Someone is importing products, or components in products, that infringe your intellectual property rights. Should you file in the ITC, and how? By Joseph R. Dorris, Jacqueline Tio, and Elizabeth Connors.
  • Challenging Patents through Post-Grant Proceedings: What Are Your Options?
    While litigating invalidity as part of an infringement lawsuit itself may seem convenient, the USPTO offers a host of administrative proceedings for challenging patent validity. By Ryan V. Petty, Rick Bisenius, and Dan Smith.
  • Functional Claims
    This blog explains what functional claiming is, why it is a powerful patent drafting tool and some potential pitfalls. By Jonathan Lamberson and Alexander Pechette.
  • Arbitration: A Way to Advance Patent Litigation During the COVID-19 Crisis
    Clients and their litigation teams face short and long-term scheduling uncertainty during the COVID-19 crisis. In the fog of uncertainty, consider arbitration as a way to advance patent litigation. By Benjamin C. Elacqua, Karrie Wheatley.
  • Patent Local Rules: Knowing Them Well Can Make Litigating Your Case Smoother
    Several federal district courts have enacted patent local rules that streamline how patent cases are litigated. What are patent local rules, how are they applied, and why should you know them intimately? By Kayleigh McGlynn, Madelyn McCormick, Michael A. Amon, Ricardo Bonilla, Megan Chacon, and Jason Wolff.
  • Whom Do I Sue and When Do I Pierce the Corporate Veil? When Corporate Officers Can Also Be Personally Liable for Patent Infringement
    Who you sue implicates your chances of winning and getting damages. When selecting defendants, don’t overlook the opportunity to pierce the corporate veil. By Jeremy T. Saks and Susan Morrison.

Fish's Blog Brigade -- attorneys writing on essential intellectual property issues






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