Did you know that you don’t need to patent every bright idea that you have in order to make money off it? It’s true. Some of the most valuable intellectual property ever is protected as trademarks and trade secrets. For example, Lego’s patent for its toy building blocks expired in the 1970s, but when was the last time you bought something that looked like a Lego block from a company that wasn’t Lego? And think of Coca-Cola – it never had a patent on its recipe in the first place. Despite being required to print its ingredients on every single bottle, Coca-Cola has made billions off its recipe by keeping it a trade secret.
This presentation examines the role effective use of trademarks and trade secrets has in a company’s overall intellectual property portfolio. The first hour will discuss the role of trademarks: what they are, how to register them, how to maintain them, and when they should be used instead of, or in addition to, patent protection. The second hour will discuss the role of trade secrets: when an innovation should be maintained as a secret and when a patent makes more sense in addition to best practices in maintaining your company’s trade secrets. Throughout the presentation, we will highlight a few real-world examples to answer common questions about the effective use of trademarks and trade secrets in a company’s intellectual property portfolio.
Key topics to be discussed:
Effective Use of Trademarks in an IP Portfolio
What a trademark is
How to register a trademark
How to police a trademark
When to use a trademark instead of or in addition to patents
Effective Use of Trade Secrets in an IP Portfolio
What a trade secret is
How to obtain trade secret protection
Best practices in maintaining information as a trade secret
When to protect an innovation as a trade secret instead of patenting it
Date: May 15, 2023
Jason Balich | Wolf, Greenfield & Sacks, P.C.
Jason Balich is a trial and appellate lawyer who protects clients’ technology and defends their freedom to use it. Jason’s experience includes successfully defending multiple patent owners—from manufacturers to public universities—facing inter partes review challenges at the Patent Trial and Appeal Board (PTAB) where the PTAB denied institution. He also focuses his practice on trade secrets. For instance, he has represented a plaintiff seeking to protect its trade secrets and a patent owner looking to stop a competitor’s infringement. In addition, Jason regularly represents defendants in patent and commercial litigation, including Hatch-Waxman ANDA litigation, before district courts and at the International Trade Commission. Jason’s counseling and litigation experience spans a diverse set of industries including pharmaceuticals, biotechnology, medical devices, data storage media, electro-hydraulic devices, military equipment, and consumer electronics. Jason studied engineering at Princeton and is the co-inventor of four US patents as a product development engineer for 3M.
Christina Licursi | Wolf, Greenfield & Sacks, P.C.
Christina Licursi is a trademark lawyer who focuses her practice on global portfolio management, counseling, and advising clients on a wide range of intellectual property matters, including branding strategies and protection, trademark and copyright infringement matters, licensing issues, and domain name disputes. With over a decade of experience, Christina has demonstrated experience in connection with developing, using, registering, licensing, and enforcing trademarks and copyrights. Her experience encompasses both trademark prosecution and litigation, including representing clients in federal courts across the country and before the US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). In addition to trademark matters, she also handles various copyright issues, domain names and related disputes, and social media and internet matters. She has extensive experience in filing through the World Intellectual Property Organization (WIPO) system, being recognized as the top US Madrid filer nationwide in 2021. In addition to her WIPO experience, Christina has great relationships within the international trademark community and can leverage her global network for quick access to a vast repertoire of trademark and copyright advice anywhere in the world.
Rob Jensen | Wolf, Greenfield & Sacks, P.C.
Rob Jensen has over 15 years of experience counseling clients ranging from start-ups and academic institutions to large corporations. With a focus on patent preparation and prosecution, trade secret counseling, patent counseling, portfolio management, providing opinions regarding patent infringement and validity, as well as patentability and freedom-to-operate studies, Rob tailors his advice to meet clients’ individual business objectives. Rob’s technology experience spans the areas of electronics, power circuits and systems, MEMS, semiconductors, image sensors, electromagnetics, control systems, energy storage, wireless communications, sensors, and software. Prior to entering the IP field, Rob was involved in research in power electronics during his undergraduate and graduate studies.
I. Effective Use of Trademarks in an IP Portfolio | 2:00pm – 3:00pm
What a trademark is | 2:00pm – 2:15pm
How to register a trademark | 2:15pm – 2:30pm
How to police a trademark | 2:30pm – 2:45pm
When to use a trademark instead of or in addition to patents | 2:45pm – 3:00pm
Break | 3:00pm – 3:10pm
II. Effective Use of Trade Secrets in an IP Portfolio | 3:10pm – 4:10pm
What a trade secret is | 3:10pm – 3:25pm
How to obtain trade secret protection | 3:25pm – 3:40pm
Best practices in maintaining information as a trade secret | 3:40pm – 3:55pm
When to protect an innovation as a trade secret instead of patenting it | 3:55pm – 4:10pm