| 
Intellectual Property Protection at Trade Shows, Conferences and Symposia
By Seth D. Levy and Joseph M. Paunovich
[February 2006]
The U.S. Department of Commerce recently published a notice requesting public comment on current policies and practices for protecting intellectual property rights in public forums, such as trade shows, and the problems associated with infringement that results from disclosure in these settings.1 Comments are due by Feb. 11, 2006. The notice highlights the competing interests of protecting valuable IP on the one hand, and presenting research and innovation to the public on the other. This is a constant tension across nearly every field of technology, and is faced by those in the public and the private sector alike.
Companies in the private sector can and should take steps to ensure that disclosure of proprietary technology at a trade show or other public forum does not undermine the strength or validity of IP associated with that technology. However, this issue is also important for organizations conducting research in the non-profit sector, such as universities, academic medical centers and independent research institutes. For these entities, an additional challenge is the pressure to publish the results of research early and often. Appropriate steps should be taken to protect valuable IP while balancing institutional academic interests. Indeed, “public disclosure” has important implications both for companies and academic institutions, because a significant loss of opportunity can result from a public disclosure that eliminates patent rights2 or the protections afforded under trade secret3 law. As such, policing disclosure by employees and researchers at trade shows, industry conferences, symposia, poster presentations and the like is crucial.
As a practical matter, it may not be feasible to prevent all disclosure of a proprietary technology, as disclosure is often essential to attracting new financing or grant funding, furthering academic pursuits, marketing products and services, developing collaborations and increasing an organization’s visibility in the field. Thus, companies and academic institutions take a variety of different approaches to the issue of protecting their IP. Even so, there are a number of basic steps that can be taken to protect IP while maintaining a commitment to disclose and market technologies:
- Document research and product development (in particular, conception and diligent reduction to practice for the protection of U.S. patent rights);
- Continually evaluate new innovations to determine what, if any, mechanisms for IP protection might be available;
- Establish a system for employees and researchers to disclose new discoveries and innovations to appropriate institutional personnel who can assess the potential for IP protection and consider the commercial value of the technology;
- Require non-disclosure or confidentiality agreements prior to disclosure of IP to employees and researchers within the organization as well as to outside individuals; and
- Avoid disclosure in trade shows, symposia, publications and the like prior to taking appropriate steps to secure patent protection where such protection is of interest (in some instances, a timely filed provisional patent application can protect patent rights).
While it is unclear how public comment to the U.S. Department of Commerce will impact legislation relating to disclosure of IP at trade events, it is clear that companies and academic institutions must take an active role in policing the disclosure of IP in public forums to protect IP rights.
Footnotes:
1 Federal Register, Vol. 71(8):2024 (January 12, 2006); to read the Department of Commerce “Notice Requesting Comments on Intellectual Property Protection at Trade Events”, click here.
2 The Patent Act describes “public disclosure” in 35 U.S.C. § 102. Public disclosure may be found when an innovation is in public use in the U.S. (i.e., trade shows), disclosed in a printed publication anywhere in the world (i.e., press kits, websites, articles, patents), or sold or offered for sale in the U.S. Under U.S. patent law, in most instances public disclosure of an invention begins a one-year grace period in which a patent application must be filed to protect the rights in an invention. M ost other countries require that a patent application is filed prior to public disclosure.
3 The Uniform Trade Secrets Act defines a “trade secret” as information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (1) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. See Uniform Trade Secrets Act (UTSA) § 1(4); Cal. Civ. Code § 3426.1.
For more information, please contact:
This Advisory is a publication of the Intellectual Property and Life Sciences Departments of Davis Wright Tremaine LLP. Our purpose in publishing this Advisory is to inform our clients and friends of recent legal developments. It is not intended, nor should it be used, as a substitute for specific legal advice as legal counsel may be given only in response to inquiries regarding particular situations.
Copyright © 2006 | Davis Wright Tremaine LLP
return to Advisory Bulletins main page
|
Email this page to a colleague
Print version