Companies often rely on trade secret protection for their most valuable intellectual property. Trade secret can protect many different types of valuable information such as chemical formulas, business or manufacturing methods or processes, software programs or designs. In the US, trade secret protection has been a matter of state law. However, on May 11, 2016, President Obama signed into law the first federal trade secret law, the Defend Trade Secret Act (DTSA).

For an overview of the new law, take a look at http://www.finnegan.com/news/newsdetail.aspx?news=08ded6c4-1886-4dde-b8f2-86e1db18652c. Finnegan has also produced a podcast on the new law: http://www.finnegan.com/podcasts/PodcastDetail.aspx?pub=88e91d7c-89dc-46ba-9dfb-0a086e72d707. (Finnegan has long been a supporter of CERC IP work and Finnegan lawyer Shaobin Zhu contributed to the CERC IP Guide and is a member of the CERC IP Experts Group).

A more detailed description is available at http://www.jdsupra.com/legalnews/defend-trade-secrets-act-signed-into-law-73692/ and a comparison of the new DTSA and the EU Trade Secret Directive can be found at http://patentlyo.com/patent/2016/05/comparison-secrets-directive.html.

For some practical insights into protecting trade secret in the US and China, see Allen & Overy Partner, Benjamin Bai’s presentation to CERC at http://www.us-china-cerc.org/pdfs/Trade_Secrets_in_China_tutorial_BAI.pdf.

In Considering Patent Law Changes, Don’t Forget Impact on Universities.Washington State University (WSU) and the University of Washington (UW) recently released a report that provides valuable insight into how university R&D spurs industry innovation and economic growth and highlights the need for careful consideration by Congress when thinking about any changes to our patent system. Brian Pomper, the Executive Director of the Innovation Alliance, a group that represents several research organizations on policy issues, summarizes. I encourage you to take a look at this summary and the UW/WSU report. (BTW, this post doesn’t represent an endorsement of Innovation Alliance).

Hearing: U.S.-China Clean Energy Cooperation: Status, Challenges, and Opportunities | U.S.-CHINA. The Senate Commission on US-China Economic and Energy Security Review held a hearing on Friday, April 25, 2014.

The hearing, “U.S.-China Clean Energy Cooperation: Status, Challenges And Opportunities,” although broadly scoped, focused on the US-China Clean Energy Research Center (CERC). Intellectual property figured prominently in the testimony of most witnesses.

Video of the entire hearing and links to bios and prepared testimony are here.

Witnesses:

Ms. Leocadia Zak, Director, USTDA;

Dr. Valerie Karplus, Project Director, China Energy and Climate Project, MIT;

Ms. Jane Nakano, Fellow, Energy and National Security Program, CSIS;

The Coal CERC was represented by Dr. Jerry Fletcher, West Virgina University; and

The Vehicles CERC was represented  by Professor Huei Peng, University of Michigan.

Ms. Sarah Forbes, World Resources Inc., where Sarah has been active in building US-China relations in clean energy, including partnerships supporting CERC; and

Professor Joanna Lewis, Georgetown University; whose research focuses on US-China S&T cooperation, specializing on innovative models and IP matters. She was the author of the summary reports of two joint workshops on IP, sponsored by DOE and organized by the CERC Secretariat.

Sharp Decline in US Patent Litigation so far in 2014 – IPWatchdog.com | Patents & Patent Law. Looking at the year to year figures, there’s been a significant drop in lawsuits filed. Comparing the first two months of 2013 to  2014, there has been a drop of 25% for the same period. Some speculate the threat of new patent legislation making its way through Congress is having an impact. Former PTO Director, now Executive Director of AIPLA, Q. Todd Dickenson, testified to Congress in December 2013 that the post-grant proceedings introduced in the US with enactment of the AIA may be working to reduce the number of lower quality patents through lower-cost administrative procedures for challenging issued patents. The new data from Lex Machina supports the conclusion reached by the AIPLA that it is simply too early to know what the overall impact of the AIA will be.

RPX takes bite of burgeoning insurance market – Blog – IAM Magazine.

Prominent critic of patent system to join the White House — Tech News and Analysis.

On May 20, 2013, 20 “experts”were invited to the White House Lab-to-Market Inter-Agency Summit in Washington, D.C., organized by the White House Office of Science and Technology Policy (OSTP) and the National Institutes of Health’s Heart, Lung and Blood Institute. The goal was to have national experts outside of the federal agency system recommend ways to increase the return-on-investment for the $140 billion expenditures on federally-funded research and development. Tom Kalil, Deputy Director for Technology and Innovation, OSTP and Todd Park U.S. Chief Technology Officer, challenged panelists to offer inspirational and transformational, not incremental, ideas.

via Report on the White House Lab-to-Market Summit. Report at http://www.itif.org/publications/turning-page-reimagining-national-labs-21st-century-innovation-economy.

Director’s Forum: A Blog from USPTO’s Leadership. Satellite offices hit by funds sequestration.

USPTO Publishes Final Rules and Guidelines Governing First-Inventor-to-File | IPWatchdog.com | Patents & Patent Law. Pursuant to the AIA, the USPTO published thee final rules of practice implementing the first-inventor-to-file provisions, which become effective March 16, 2013. Other AIA related rules were published today as well, including, as ipwatchdog reports, “the agency’s interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application.”

Important Changes To U.S. Patent Law: First-To-File | Pierce Atwood LLP – JDSupra. Some good guidance on the implications of the change from First-to-invent, to first-to-file.