In House

In House - The FindLaw Corporate Counsel Blog


3 Things Inventors Wish Their Patent Counsel Would Do

Here's something to know when you are working with inventors: they don't want to be there. Your typical engineer-inventors don't have a huge incentive to do the patent paperwork. It's the company that stands to make the big profit. For the inventors, it's little more than documentation.

Inventors are focused on the core business of the company. As company attorneys, it's our job to serve them, not the other way around. So here are three ways we can do that job better:

You may have left the confines of a law firm but you are still a member of a team -- and this week is a big week for corporate teams. Wednesday is Administrative Professionals Day. You forgot? No problem, we've got some tips for your here (just whatever you do, don't delegate gift purchasing to your admin).

Now that your admin is covered, now you've got to deal with the kids. Yes, kids. Thursday is Take Our Daughters and Sons to Work Day, and in the spirit of nurturing our future leaders, you should participate.

Over the last few years, the National Labor Relations Board has continuously expanded Section 7's reach, a section which generally protects speech about working conditions, such as pay and hours. First, the NLRB stretched Section 7 to cover overly-broad social media policies, which often contain anti-disparagement language. And while "no badmouthing the boss or company on Twitter" may seem reasonable, the NLRB held that the broad language could discourage protected Section 7 speech.

In January, the NLRB struck again, but this time at a different topic: workplace gossip. Free speech may have no place in the workplace, but speech about working conditions does, and policies that broadly prohibit backbiting and gossip will be struck down on that accord. The trend continued this month, with the NLRB striking down an employee-authored policy, the Values and Standards of Behavior Policy at Hills and Dales General Hospital.

Your In-House Interview -- Prepare Deeply

In-house counsel is not your typical job. You're a lawyer, but you're not working at a law firm: you're at a company that's focused on something else. In a way, you'll be both an insider and an outsider.

If that is exactly the job you want, how will you bridge that gap and show the interviewer you're the right person for the position? In Johnny Cochran's words, "preparation, preparation, preparation." And you might get some insights about yourself too.

They say "diamonds are forever," but not so for general counsel. Last week, Tiffany announced that Patrick B. Dorsey, Tiffany's general counsel and secretary will retire, effective May 22, 2014.

That's not all, Princeton University is also losing its general counsel -- and the position is not yet filled. Looking for a new job in New Jersey anyone?

For the past 13 years, InsideCounsel has hosted SuperConference, an event boasting experts speaking on panels, exhibitors and sponsors from leading technology providers and law firms, and draws more than 450 attendees ranging from in-house counsel to general counsel.

This year, the 14th Annual InsideCounsel SuperConference will take place from May 12-14, 2014 and will be in Chicago. Here are some details about the event, and why you should consider attending.

We've been hearing a lot of security data breaches lately -- some would say too much. From the Target and Neiman Marcus debacle to last week's Heartbleed bug, we now know why cybersecurity is on the minds of general counsel not just in the U.S., but worldwide.

Based on a recent district court decision, the data breach itself may be the least of a company's problem. What may be worse is not only the media and consumer fallout, but the possibility of FTC enforcement actions, and private litigation.

Please pass the Advil. 

When Congress enacted the America Invents Act in 2011, the USPTO was charged with designating four satellite office locations, and they chose: Detroit, Denver, Silicon Valley and Dallas. The Detroit office was successfully opened in July 2012, the Denver office is hiring, and the Dallas office has been operating out of a temporary space since 2013.

What's going on with the Silicon Valley office?

The USPTO's Silicon Valley satellite office is operating out of a less central temporary office, and is only staffed with a few Patent Trial and Appeal Board judges, according to Corporate Counsel. What's the hold up?

A few weeks ago, the Supreme Court decided a case that clarifies the pleading requirements for a plaintiff who makes a claim for false advertising under the Lanham Act. As the guardians of your company's intellectual property, knowing the new standard is paramount. Here's a breakdown of the Supreme Court's decision so you can determine whether to pursue, or defend, any federal false advertising claims.

Background

Lexmark manufactures laser printers, and they are made to work only with Lexmark toner cartridges. An aftermarket has developed where third parties acquire, refurbish and resell Lexmark cartridges. To combat this, Lexmark developed a prebate program giving customers a discount up front, for the promise to return the cartridge to Lexmark, rather than a remanufacturer.

To ensure this, it created a microchip for the cartridges that would disable the cartridge once it was emptied. Static Control developed a microchip that mimicked Lexmark's; Lexmark distributed a letter to its customers saying that they were legally bound to return the cartridges to Lexmark, and sent a letter to remanufacturers saying it was illegal to sell refurbished cartridges, and that it was illegal to use Static Control's microchip.

Steve Jobs may have been a genius, but he was an idiot about discussing anti-competitive behaviors over email. His emails were one of the deciding factors in the Apple e-book lawsuit (Apple lost) and now, his words are haunting his friends in the tech industry in a different anticompetitive case: the non-poaching pact class action that first made headlines late last year.

In October, the all-knowing, all-seeing Judge Lucy Koh allowed the lawsuit to proceed, and now, six months later, the parties are entering into intense settlement negotiations, with figures like $9 billion being floated around (and scoffed at by the tech companies). Laugh now, pay later, because the eDiscovery evidence seems damning.