Trade Secrets and Patents: A Comprehensive Approach to Protecting Intellectual Property
Evaluating the Protection Options, Weighing the Benefits and Risks
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide IP counsel in determining whether trade secret or patent protection is the optimal mode for inventions and technologies. The panel will outline best practices for counsel to consider in determining the optimal form of protection.
Outline
- Impact of the DTSA on patents
- Impact of the AIA on trade secrets
- Inventions/technologies suitable for trade secret protection
- Benefits and risks of patent and trade secret protection
- Best practices
- Choosing between patent and trade secret protection
- Implications of the choice
Benefits
The panel will review these and other key issues:
- What impact has the DTSA had on patents?
- For what types of inventions is trade secret protection most suitable? Which inventions are more suitable for patents?
- What factors should counsel consider when choosing between trade secrets and patents to protect IP?
Faculty
Laura M. Burson
Partner
Sheppard Mullin
Ms. Burson’s practice focuses on intellectual property litigation with an emphasis on patent law. She is a... | Read More
Ms. Burson’s practice focuses on intellectual property litigation with an emphasis on patent law. She is a registered patent attorney, admitted to practice before the USPTO. Ms. Burson has extensive trial and appellate experience in a variety of technology areas including chemicals, medical devices, biopharmaceuticals, computers, and high tech. She also represents clients and argues cases in matters pending before the USPTO, including Inter Partes Review and Reexamination proceedings. Ms. Burson is a mentor and thought leader, serving as a Past President of the Los Angeles Intellectual Property Law Association where she has been an officer/board member for 10 years. In addition, Ms. Burson is also an Executive Committee member of the USC IP Institute. She is a frequent speaker on IP issues and the co-author of the ABA’s, The Intellectual Property Handbook, 2nd Edition (Patent Chapter).
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Bradley C. Graveline
Partner
Sheppard Mullin
Mr. Graveline’s practice focuses on patent litigation, intellectual property advice, cannabis, trademarks and... | Read More
Mr. Graveline’s practice focuses on patent litigation, intellectual property advice, cannabis, trademarks and other commercial litigation. He is a nationally recognized first chair trial lawyer with more than 25 years of experience litigating patent infringement cases. Mr. Graveline’s patent infringement experience involves technologies that include pharmaceuticals, biologics, medical devices, nutrition supplements, security screening systems, computer software and wireless communications. He led the trial team that secured one of the largest (if not the largest) patent infringement damages awards against the United States of America on behalf of client SecurityPoint Holdings Inc. In a decision from the U.S. Court of Federal Claims, the court awarded SecurityPoint more than $103 million in damages based on the government’s unauthorized use of SecurityPoint’s patent.
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Darren M. Franklin
Partner
Sheppard Mullin
Mr. Franklin is a registered patent attorney with expertise in patent litigation, patent post-grant proceedings, patent... | Read More
Mr. Franklin is a registered patent attorney with expertise in patent litigation, patent post-grant proceedings, patent prosecution and counseling, trademark litigation, unfair competition claims, and IP due diligence. His clients are involved in diverse industries and technologies, including aerospace, computers, entertainment, gaming, lighting, medical devices, office products, pharmaceuticals, semiconductors, software, sports products, telecommunications, and video games. He has extensive experience representing clients in the federal courts and in the U.S. Patent and Trademark Office (USPTO), including before the Patent Trial and Appeal Board in inter partes review proceedings. His experience includes arguing (and winning) multiple patent infringement cases before the U.S. Court of Appeals for the Federal Circuit and dispositive motions in the U.S. District Courts. Among other cases, he argued and won a significant motion and Federal Circuit appeal based upon the patent ineligibility of abstract ideas in the wake of a 2014 Supreme Court case.
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Kathryn Ryan
Attorney
Sheppard Mullin
Ms. Ryan focuses on counseling clients in intellectual property matters in the areas of cannabis, data privacy,... | Read More
Ms. Ryan focuses on counseling clients in intellectual property matters in the areas of cannabis, data privacy, patents, and trade secrets. Her litigation practice includes work on a variety of high profile intellectual property cases, including in the areas of patent infringement, data breaches, the Illinois Biometric Information Privacy Act (BIPA), and theft of trade secrets. She was a member of the Sheppard Mullin team that obtained one of the largest (if not the largest) patent infringement damages awards against the U.S. Before joining Sheppard Mullin, she worked in the trucking and logistics industries.
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