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 particular inventions and technologies. The panel will outline best practices for counsel to consider.
Outline
- Overview of the Defend Trade Secrets Act (DTSA)
- Impact of the DTSA on patents
- Litigation trends
- Inventions/technologies suitable for trade secret protection
- Benefits and risks of patent and trade secret protection
- Best practices for choosing between patent and trade secret protection
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
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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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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Yasamin Parsafar
Partner
Sheppard Mullin
Ms. Parsafar is a partner in the Intellectual Property (IP) Practice Group in the firm's San Francisco office.... | Read More
Ms. Parsafar is a partner in the Intellectual Property (IP) Practice Group in the firm's San Francisco office. She is a Co-Leader of the firm’s Blockchain and Fintech Team and a member of the firm’s Artificial Intelligence Team. Ms. Parsafar's practice focuses on protecting and enforcing her clients’ IP rights (trademark, copyright, patent, trade secret), as well as risk management. She uses her litigation experience to strengthen and protect her clients’ IP portfolios, manage risks, and position businesses to succeed in the event of a dispute. Ms. Parsafar provides strategic advice and counseling to avert disputes and to resolve disputes in a way that aligns with business goals should they arise. She has over a decade of experience litigating complex commercial claims involving copyright, trademark, trade dress, false advertising, and patent disputes in federal courts nationwide.
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