Good-Bye for Now

It all began 4.5 years ago.

I embarked on a journey that I could never see coming when I started my law career in 1998.

I started a part-time solo intellectual property law practice out of my home.

If you knew me back then, you would have been surprised.  Why would a woman who vowed never to work in a law firm (and didn’t for her entire legal career) choose to start her own firm?  Especially when she had told everyone that she wanted to be a stay-at-home mom until her child went off to school?

Oh, life holds many surprises, least of which was how much I didn’t like being a full-time stay-at-home mom.  I missed my job.  I missed the people.  I missed dressing up to go to work.

At the same time, I didn’t quite want to let my mom aspirations die.

So what’s a girl with a law degree to do?  Start a law firm of course.

I went back into law part-time on my own terms, and it was good for a while.  It solved my immediate problems of boredom and loneliness.

But it never felt comfortable.  In fact, I felt like I was trying to be something I’m not.

Much to my surprise, I discovered over time that I really don’t like practicing law.  I don’t find the work challenging.  Not like when I was in-house.

I began taking stock of my career and my life.  What do I like?  What do I want to do?  What appeals to me now at this time of my life?

What did I love about my in-house career?  Strategy and teaching.

What did I learn from my years of solo practice?  What it takes to build a great law firm in today’s challenging legal market.

Can I put what I love and what I learned together?  You bet!

Early in 2013, I felt this overwhelming sense that I needed to start something new, a new business dedicated to challenging the legal industry standards and change the way attorneys market and sell their legal services.

In late spring, Lawducate was born.

I worked on my business model over the summer, and am so excited to start this new chapter in my life.

Unfortunately, that means I must say good-bye to my intellectual property practice.

That is such a hard thing to write.   I’ve wanted to be an attorney since I was 13 years old, and I LOVE intellectual property law.  I would not have practiced law if I couldn’t practice IP.

Letting go is not easy, but I’m ready to move on to bigger and better things. Sometimes, you have to say farewell to something, to say hello to something else.

Thank you for reading this blog over the years.  Thank you all for your support.

It’s good-bye law practice, hello Lawducate.

The IP made simple name will live on as a brand new program to train in-house IP counsel, just one of the many unique offerings at Lawducate.

Come visit me soon at my new website, www.lawducate.com.  Follow me now on Twitter at @lawducate.

 

How to Register Your Copyright Workshop

Do you know how to use the online copyright registration system?  No!  Then this workshop is for you.

Intellectual Property Attorney Kiffanie Stahle is offering a one-of-a-kind workshop at the end of September entitled “Navigating the Online Copyright Registration System”.

When I saw this, I thought my readers could really benefit from this material. 

This workshop will walk you through the online copyright registration system and you will leave ready to submit a U.S. Copyright Office online copyright registration application.

All the details are below.

 

Navigating the Online Copyright Registration System

Thursday, September 26, 2013 from 10:00 AM11:30 AM

Copyright (Washington, DC)

You know that you should be registering your copyrights with the U.S. Copyright Office. Maybe you’ve tried and the legal jargon tripped you up. Or maybe you’ve done it but weren’t 100% sure that you prepared the application correctly. Or maybe the 1990s website made you bonkers.

Fear no more, this workshop will guide you step-by-step through the process and will help you in preparing an application for submittal.

We’ll also talk about common pitfalls, de-mystify the legal jargon, and talk about simplifying your workflow to make registration a regular occurrence.

By the end of the workshop, you’ll just need to grab your credit card and pay the U.S. Copyright Office $35 to submit your application.

In order to participate you must complete the following steps before the workshop:

  • Register as a user in the eCO system. If you need to register, click here.
  • Gather the materials you want to register in one of the approved file formats.
  • Fill out the PDF sent upon registration to gather the remaining information you’ll need to complete the application.
  • Register with Google so that you can participate in the workshop via Google Hangout.

Once you register for the workshop, I will send you the PDF to complete and a link to the Google Event where the Hangout will occur. On the day of the event, you will login via Google Hangout to participate.

To assure that each participant is able to complete the application, space is limited to nine participants.

Please register for the event here.

If you have any questions, please contact Attorney Stahle at kiffanie@stahlelaw.com.

 

Don’t Put It in Writing

No TextingDo you know that saying, “Don’t put it on facebook if you don’t want your Grandmother to see it”?  Of course you do.

We all should know by now that if you put something on the web, like that picture of you drinking at a frat party (underage!), it NEVER goes away and practically anyone who cares to look can see it whenever they feel like it.

As we over-share everything in our lives on social media and as a whole generation only communicates in 140 characters or less, one of the biggest legal headaches is keeping emails, texts, and other written communications out of the hands of opposing counsel.

I know this thing is nothing new.  I had some issues when I was working in-house.   I remember some employees sending emails to convey some less-than-favorable news to the department, rather than allowing me to speak with the head of the department about the sensitive matter.

Those things happened, and the company would deal with it.

So what’s changed?

I left corporate behind in 2006.  There was no social media to worry about.  We weren’t texting junkies.  We actually knew how to use the phone, and more often than not that phone was not mobile, and it was owned by the company.

Things are different today.

We put more in writing today, every day, than ever before in human history.  We do it from our mobile devices from anywhere in the world.

Seriously, can you imagine the legal headaches when the texting-only generation makes its way into the workforce?  These young people can’t stop texting long enough to drive a car.  Calling someone is an arcane ritual that their grandparents did.  Do we think they’ll think twice before sending out that smoking gun email or text that makes opposing counsel dance around his office?

I can just see this text from Engineer 1:

STOP ALL WORK!  I think we infringe XYZ Company’s patent.

And Engineer 2 responds:

Attorney Smith told me that there’s a 70% chance we infringe.  I think it’s OK to keep working on that project.

Why are these texts so scary for attorneys?

If XYZ Company sued for patent infringement, this sort of text exchange would be a great piece of evidence to prove that the Defendant willfully infringed the patent.  It shows that Defendant’s employees knew about the patent, knew they possibly infringed the patent, but decided to move forward with the infringing product anyway.  If the Court determined that Defendant willfully infringed, Defendant could be forced to pay triple damages to XYZ Company.  That’s a lot of money.

To avoid this situation, the attorney would normally convey the message without reducing it to writing, although a written communication from an attorney to the employee might get the benefit of Attorney-Client Privilege.

HR and legal departments should start thinking about training programs that teach one of the golden rules of business.  For those of you over 40, you might remember it…“If it’s bad news, don’t put it in writing.”

Too many people don’t know to pick up the phone to pass on the bad news.  We’re so used to communicating via email and text that we’ve forgotten the consequences of putting too much in writing.

In the corporate world, it’s not your grandmother or a future employer you have to think about.  It’s opposing counsel.  You need to be thinking, what would happen if our legal adversary saw this?

I guarantee opposing counsel will embarrass you more over that errant text regarding patent infringement than any drunken picture of you ever could.

Obama Administration Intervenes in Apple v. Samsung Dispute at the USITC

In a rare intervention, on Saturday, August 3, 2103 the Obama Administration reversed a US International Trade Commission (USITC) decision against Apple.

In June, 2013, the USITC determined that Apple had violated Section 337 of the 1930 Tariff Act, as amended, by importing certain electronic devices into the United States.

Apple products were found to have infringed Samsung’s US Patent No. 7,706,348.  As a result of this finding of infringement, the USITC issued an exclusion order, banning Apple from importing unlicensed smart phones and tablet computers, including the iPhone 4 and the iPad.  They also issued a cease and desist order preventing Apple from selling these products in the United States.

Under Section 337, the President, through the US Trade Representative, has 60 days to review such orders.   The President can approve or disapprove the order, or do nothing, based on “policy grounds”.

What are “policy grounds”?

According to the letter disapproving of the order, “policy grounds” include:

1.  Public health and welfare; 2. Competitive conditions in the US economy; 3. Production of competitive articles in the United States; 4. U.S. Consumers; and 5. U.S. foreign relations, economic and political.

Another policy consideration is whether or not the patent in question is a Standard Essential Patent (“SEP”).  SEPs are patents which cover technology allowing for the interoperability of devices used by a large number of consumers.  In this case, smart phones and tablet computers are subject to certain technology standards.

Companies, on a voluntary basis, can offer licenses to other companies seeking to implement the standard on terms that are fair, reasonable, and non-discriminatory (“FRAND”).  If they offer such licenses, they cannot assert the patent to exclude an implementer of the standard.

Samsung has made a commitment to FRAND licensing of it patents.

Therefore, the US Trade Representative, after careful consideration, based his disapproval on the effect the orders would have on the US economy and the US consumer in light of Samsung’s voluntary commitment to FRAND licensing.

It should be noted that this determination does not prevent Samsung from pursuing a remedy through the US Court System, which Samsung has already done.  A patent infringement lawsuit is currently pending in Federal Court in Delaware.  That case was stayed (with consent of both parties) pending outcome of the USITC case.

New Judge for the US Court of Appeals for the Federal Circuit

Raymond_T__ChenOn August 1, the US Senate unanimously confirmed Raymond T. Chen for a seaton the United States Court of Appeals for the Federal Circuit.  (Who knew both parties could work together to solve our nation’s problems?)

What does this have to do with IP?

Mr. Chen is currently the Deputy General Counsel for Intellectual Property Law and Solicitor for the United States Patent and Trademark Office.  According to a February 2013 White House press release, Mr. Chen has been working in that capacity since 2008, and has vast experience that will serve him well in his new position.

Since joining the USPTO, Chen has represented the agency in numerous appeals before the Federal Circuit and personally argued over 20 cases, issued guidance to patent examiners to ensure consistency with developing law, advised the agency on legal and policy issues, and helped promulgate regulations.  He has co-chaired the Patent and Trademark Office Committee of the Federal Circuit Bar Association and is a member of the Advisory Council for the United States Court of Appeals for the Federal Circuit.

His knowledge of and experience in intellectual property law matters will be a welcome addition to the US Court of Appeals for the Federal Circuit.

Happy First Anniversary!

Slide1

Today, I’m celebrating the first anniversary of IP made simple.

I remember all of the work I put into getting the website up-and-running last summer, and how excited I was to get started.

Well, it’s been an eventful first year.  The path forward has been absolutely amazing.  I’ve learned so much.  Things happened that have propelled me in unexpected directions.  There were highs and lows.  Mistakes were made and lessons were learned.

It truly has been an entrepreneurs journey that has changed my view of my profession and my work.

I am so excited to be starting year 2 with big plans.

Stay tuned for my big announcement this fall!

 

Lawmakers Propose Amending US Economic Espionage Act

tradesecret bigYesterday, two United States Senators proposed legislation to address the theft of US trade secrets by foreign thieves.  U.S. Senators Sheldon Whitehouse (D-RI) and Lindsey Graham (R-SC) released a discussion draft for proposed legislation that would close a loophole that allows foreign hackers and the governments that support them to escape law enforcement.

It is no secret that trade secret theft is becoming a significant problem for US companies.

“Trade-secret theft and economic espionage threaten American companies and our nation’s economic competitiveness. Foreign thieves and hackers must not be allowed to escape accountability through loopholes in our criminal laws,” said Senator Whitehouse.

The cost to continuously invent the future is high.  Many foreign individuals, companies and governments are looking to short-cut the process by stealing the technological know-how of US companies, universities, and research facilities.  By stealing technology, foreign competitors can bring cheaper products to market faster without the significant upfront R&D costs.

In our current highly competitive global marketplace, trade secret theft is on the rise.  That theft causes US companies and the US economy to lose billions of dollars every year.  In order to combat such theft, the US has made trade secret theft a crime in the United States.

Senator Graham added, “Trade-secret theft and economic espionage can become forms of financial warfare. We must make sure we give law enforcement the tools to go after state-sponsored foreign hackers and organized cyber-thieves that are stealing our intellectual property.”

Over recent years, there has been an uptick in the number of trade secret theft prosecutions, resulting in hefty fines and jail time for the perpetrators.  Unfortunately, it is practically impossible to prosecute an individual who engages in such criminal activity if they are not in the United States, say through cyber attacks by foreign hackers.

A summary of Proposals for Discussion can be found here.

Speaking at Founders League Tomorrow

founders_league_logo-83d63f529a032b32f63f5b1d482ba6d3Are you starting a business around a cool new product that you and your team invented?  Are you thinking about what is the best way to protect your business from copycats?  Maybe you would like to know a bit more about the role intellectual property plays in your startup.

Don’t know much about intellectual property?  Know problem.

For anyone who is in the Providence, RI area tomorrow, July 17, I will be speaking from noon to 1pm.

The topic is Intellectual Property 101.  I’ll be giving a short presentation followed by lots of Q&A.

Location: Founders League

95 Chestnut Street

Providence, RI

All the details to sign-up can be found here.

Hope to see you there!

Happy Independence Day!

What’s more American than the Walt Disney Company who just happen to be the largest consumer of fireworks in the world.

Here’s their US Patent No. 5,339,741 for Precision Fireworks Display System Having a Decreased Environmental Impact.

Fireworks PatentMickey Mouse fireworks

 

Small Business Owners Need to Get It in Writing

ContractWhy do so many business owners only think about the contract AFTER they have done the work?

Let me set up the typical scenario:

Prospective Client:  Hi Attorney Proia.  My accountant, Joe Schmo, suggested that I contact you.

Me:  Hi!  How can I help you?

Prospective Client:  A customer called me up and needed a custom website with X, Y, and Z functionality.  The website came out great, and other customers are interested in it.  Who owns the website?

Me:  What does your contract say?

Prospective Client:  I don’t have a contract.  They needed the work done in a hurry…there was no time to lose…it was a handshake deal…

Ugh!

Why, oh, why didn’t you think about this stuff BEFORE you did the work?

Written contracts are important.  They define relationships.  They sort out the pesky little details like what happens if you don’t perform, who owns what, and how on earth you’re going to get paid.

When I worked in-house, legal was always blamed for holding up the deal.  If it weren’t for legal, we could have booked that order by now.  (I always liked to think that if it weren’t for legal, the company would be out of business because we’d never get paid, everyone would steal our IP, and general chaos would reign, but I digress.)

I know that negotiating contracts can be frustrating and time-consuming.  Contracts can actually be scary for small business owners.  What if I ask for too much?  Will the customer walk away?

When you think that the worst thing that can happen is the customer walking away, it feels better to just take the money without making waves.  Can’t you hear the list of excuses for not getting an agreement in writing?  They seem like nice people.  They’ll never sue me.  I know they’re good for the money.

But then you end up with uncertainty, and let me tell you, uncertainty is WAY scarier than letting the customer walk away.  In fact, after a few rounds of trying to get your money, you will wish you had let them walk right out the door.

By trying to avoid a little pain in the beginning, you could be dealing with a lot of misery in the end.

Don’t let this happen to you.  Get it in writing BEFORE the $#!+ hits the fan (because you can always use the contract to clean up after the mess.)