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Intellectual Property Practice Jerry Cohen et al. M C L E NEW ENGLAND Keep raising the bar.® Intellectual Property Practice 3RD EDITION 2016 EDITOR Jerry Cohen AUTHORS Sara Yevics Beccia Russell Beck David E. Blau Jerry Cohen John A. Hamilton Renee Inomata Timothy M. Murphy Deborah J. Peckham Jay Sandvos Mark Schonfeld John C. Serio William S. Strong Bruce D. Sunstein 2160324B03—3rd Edition 2016 © 2016 by Massachusetts Continuing Legal Education, Inc. All rights reserved. Published 2016. Permission is hereby granted for the copying of pages or portions of pages within this book by or under the direction of attorneys for use in the practice of law. No other use is permitted without prior written consent of Massachusetts Continuing Legal Education, Inc. 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These terms and conditions may be changed from time to time without notice. Continued use of MCLE Products following any such change constitutes acceptance of the change. IRS Circular 230 Notice: Any U.S. tax advice found to be included in MCLE Products (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of avoiding U.S. tax penalties or for promoting, marketing, or recommending to another party any tax-related matter or any other transaction or matter addressed therein. Massachusetts Continuing Legal Education, Inc. Ten Winter Place, Boston, MA 02108-4751 800-966-6253 | Fax 617-482-9498 | www.mcle.org ACKNOWLEDGMENTS This practical treatment of patent, trademark, trade secret, and copyright law and practice was first envisioned by Jerry Cohen, an expert in intellectual property law and a generous volunteer for MCLE. We acknowledge and warmly thank Jerry for serving as chief editor of this work. His editorial leadership and advice and the care that he has taken in the editing of the chapters is much appreciated by MCLE. MCLE’s appreciation extends as well to the authors of this work, who were se- lected for their particular areas of intellectual property expertise. Those who joined Jerry Cohen in the writing and updating of the chapters for the 2016 edition include Sara Yevics Beccia, Russell Beck, David E. Blau, John A. Hamilton, Renee Inomata, Timothy M. Murphy, Deborah J. Peckham, Jay Sandvos, Mark Schonfeld, John C. Serio, William S. Strong, and Bruce D. Sunstein. Each of these individuals has taken a unique role in the success of this publication, and we are grateful to them for their participation. The MCLE Board of Trustees is acknowledged and thanked for its ongoing sup- port of and enthusiasm for the publishing program. Finally, we thank the many MCLE staff members who formatted, edited, copyedited, indexed, and printed these pages. John M. (Jack) Reilly, Esq. Maryanne G. Jensen, Esq. Publisher Editor-in-Chief January 2016 3rd Edition 2016 iii INTELLECTUAL PROPERTY PRACTICE ABOUT THE EDITOR JERRY COHEN is a partner of the Boston firm of Burns & Levinson LLP. He has forty-five years of experience in dealing with patent, copyright, trademark, unfair competition, licensing/franchising, visual arts, software, databases, and publication law; formation and operation of business enterprises and not-for- profit organizations; international trade; litigation/alternative dispute resolution; and legal ethics. He handles acquisition, licensing, and litigation of intellectual property rights and has served as an expert witness, arbitrator, and mediator in intellectual property matters, currently with JAMS, and is a fellow of the Char- tered Institute of Arbitrators. Mr. Cohen is a frequent author and presenter on intellectual property topics and an adjunct professor at Suffolk University Law School and Roger Williams University Law School. He is a member of the American Bar Association, the American Intellectual Property Law Association, the Copyright Society, Fédération Internationale des Conseils en Propriété In- dustrielle, the International Trademark Association, the board of editors of the Rhode Island Bar Journal, the advisory board of the United States Patent Quar- terly, and the boards of editors of the Massachusetts Law Review and the Rhode Island Bar Journal. His books include Trade Secret Law, Trademarks and Un- fair Competition, Modern Patent Law Precedents, and International Trade Prac- tice. He is a past president of the Massachusetts Bar Foundation and a 2015 recipient of the foundation’s Great Friend of Justice Award. Mr. Cohen is a graduate of George Washington University School of Law and Rensselaer Poly- technic Institute. Contact: [email protected] ABOUT THE AUTHORS SARA YEVICS BECCIA is an associate of the Boston firm of Burns & Levin- son LLP, where she concentrates on domestic and international trademark, copyright, unfair competition, false advertising, and Internet-related matters. Previ- ously, she was with the Boston office of K&L Gates LLP. She is admitted to practice in Massachusetts and New York and before the U.S. Court of Appeals for the First Circuit and the U.S. District Court for the District of Massachusetts. Ms. Beccia is a member of the International Trademark Association Internet committee and the Boston Bar Association Internet and computer law committee. She is a graduate of Boston University School of Law and Lafayette College. Contact: [email protected] RUSSELL BECK is a founding partner of the Boston firm of Beck Reed Riden LLP, where he concentrates on business litigation and related advice, including complex business and contract disputes, high-tech matters, protection of trade secrets, enforcement and defense of noncompetition agreements, copyright and iv 3rd Edition 2016 trademark disputes, postmerger and acquisition claims, land use cases, and health-care payor/provider disputes. His services range from litigation prevention and advice to trials and appeals, including all methods of alternative dispute resolution, and from mediation to binding mediation to arbitration, both as the advocate and as the neutral. He is admitted to practice in Massachusetts and New York and before the U.S. Court of Appeals for the First, Fourth, and Fifth Cir- cuits and the U.S. District Court for the Districts of Massachusetts and Eastern and Southern New York. Mr. Beck is a frequent author and presenter on intellectual property issues and noncompetition agreements and litigation. He also teaches a course on trade secrets and restrictive covenants at Boston University School of Law. Previously, he was a partner with Foley & Lardner LLP and an associate with Simpson, Thacher & Bartlett LLP and Reynolds, Rappaport & Kaplan. He is a graduate of Boston University School of Law and Tufts University. Contact: [email protected] DAVID E. BLAU is an associate of the Boston firm of Sunstein Kann Murphy & Timbers LLP, where he concentrates in patent preparation and prosecution. He is a registered patent agent. Previously, he was a software developer and project manager, worked for a leading gemstone retailer as a senior systems developer and at the National Security Agency in the field of crypto-mathematics, and was a senior engineer at a leading Internet content management provider. Mr. Blau is a member of the American Intellectual Property Law Association, the Boston Patent Law Association, and the American, Massachusetts, and Boston Bar As- sociations. He is a graduate of Chicago-Kent College of Law and the California Institute of Technology. Contact: [email protected] JOHN A. HAMILTON is counsel to Burns & Levinson LLP in the Boston office. He works with corporations and institutions handling patent prosecution, licensing, portfolio strategy, opinions and enforcement, and U.S. Food and Drug Administration (FDA) regulatory matters. He is also experienced in patent and other intellectual property law. Previously, he was with Perkin Elmer, Avid Technology, Perkins Smith & Cohen LLP, and the FDA. Mr. Hamilton is a member of the Licensing Executives Society, the Boston Patent Law Associa- tion, and the Massachusetts and Boston Bar Associations. He is a graduate of Suffolk University Law School and the Massachusetts Institute of Technology. Contact: [email protected] RENEE INOMATA is a partner of the Boston firm of Burns & Levinson LLP and chair of the labor, employment, and employee benefits practice group. She coun- sels clients on workplace issues, including strategic planning for staffing; compen- sation and wage; discrimination, harassment, and retaliation; policy development and implementation; personnel performance management; and the drafting, im- plementing, and enforcing of noncompetition, nonsolicitation, and confidentiality agreements. Ms. Inomata also handles all aspects of clearing, securing, enforcing, 3rd Edition 2016 v INTELLECTUAL PROPERTY PRACTICE and maintaining trademark, service mark, trade dress, and trade secret rights and copyrights, including registration, licensing, and enforcement at the state, federal, and international levels and proceedings before the Trademark Trial and Appeal Board. She is a graduate of Boston University School of Law and Brown Universi- ty. She is a member of the American, Massachusetts, Boston, and Women’s Bar Associations, the International Trademark Association, and the Asian American Lawyers Association. Contact: [email protected] TIMOTHY M. MURPHY is a partner of Sunstein Kann Murphy & Timbers LLP in Boston and cochair of the firm’s patent practice group. He develops and imple- ments strategies for protecting technologies and avoiding allegations of infringement; devises strategies for maximizing the value of patent portfolios for litigation licensing or acquisition; and handles complex patent interference and reexamina- tion proceedings. He has extensive experience in shaping and executing strategies in patent litigations. Previously, he was with the legal department of a multina- tional computer manufacturer in New York and California. Mr. Murphy is a frequent lecturer and author on intellectual property topics and was a member of the board of editors of the Boston Bar Journal. He is a graduate of Columbia Univer- sity School of Law and Columbia University. Contact: [email protected] DEBORAH J. PECKHAM is a partner of Burns & Levinson LLP in Boston, where she provides intellectual property counseling and enforcement advice, with a focus on strategic acquisition and maintenance of domestic and international intellectual property assets. Her practice also encompasses privacy, data protection, and information law issues. Ms. Peckham’s litigation experience includes trademark, patent, copyright, counterfeiting, and general commercial disputes. Previ- ously, she was with the Boston firms of K&L Gates LLP and Testa, Hurwitz & Thibeault LLP. She is a member of the American Bar Association Intellectual Property Law Section, the American Intellectual Property Law Association, the Massachusetts and Boston Bar Associations, the Boston Patent Law Association, and the International Trademark Association enforcement committee and courts & tribunals subcommittee. Ms. Peckham is a graduate of Boston College Law School and the University of Michigan. Contact: [email protected] JAY SANDVOS is a partner of Sunstein Kann Murphy & Timbers LLP in Boston, where he specializes in prosecuting patents to help clients establish dominant patent portfolios in highly advanced fields of technology. He is experienced in developing, managing, and coordinating large complex patent portfolios and supporting patent litigation cases in federal, district, and appellate courts. Mr. Sandvos regu- larly advises and coordinates with patent colleagues outside the United States to guide their clients’ patents through the special customs and practices that are unique to American patent law. He is a frequent author of commentaries on devel- opments in patent law. He is a graduate of Boston College Law School and the State University of New York Regents College. Prior to attending law school, he vi 3rd Edition 2016 served in the Naval Nuclear Power Program, leading the reactor controls division on the submarine USS San Juan. Mr. Sandvos is admitted to practice in Massa- chusetts and before the U.S. District Court for the District of Massachusetts, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Patent and Trademark Office. He is cochair of the Boston Bar Association international intellectual property committee. Contact: [email protected] MARK SCHONFELD is a partner of the Boston firm of Burns & Levinson LLP, where he concentrates in complex business and intellectual property litigation, especially protection of corporate intellectual property through effective methods of trademark, copyright, and patent litigation. He has extensive experience in protecting some of the world’s leading brand names from infringement and is responsible for the seizure of millions of dollars in counterfeit merchandise from distribu- tion centers, retail operations, and factories that manufacture counterfeit products, as well as in preventing and stopping “gray market” imports. Mr. Schonfeld is admitted to practice in Massachusetts and New York and before the U.S. Court of Appeals for the First and Third Circuits and the U.S. District Court for the Dis- tricts of Massachusetts, Colorado, and Eastern New York. He is a frequent presenter and author on intellectual property topics and is a graduate of Cornell Law School and New York University. Contact: [email protected] JOHN C. SERIO is a partner of Burns & Levinson LLP in the Boston office. He focuses on intellectual property related to biotechnology, pharmaceuticals, medical devices, chemistry, health care, and analytic scientific equipment. His practice involves drafting and prosecution of patents, right to use and patentability opinions, patent litigation, licensing of technology, and trademark issues. He has extensive experience in U.S. Food and Drug Administration regulatory issues. Mr. Serio is a member of the Boston Chamber of Commerce Life Science Alli- ance, the Boston Patent Law Association, and the Boston Bar Association. He is a graduate of Western New England College School of Law and the University of Rhode Island School of Pharmacy. Contact: [email protected] WILLIAM S. STRONG is head of the intellectual property practice at Kotin, Crabtree & Strong LLP in Boston. He is admitted to practice in Massachusetts and New Hampshire. He is a graduate of Harvard Law School and Harvard Col- lege. Mr. Strong is the author of The Copyright Book: A Practical Guide, currently in its 6th edition (The MIT Press 2014); the chapter on copyright in The Chicago Manual of Style; the chapter on legal issues in the Columbia Guide to Digital Publishing; and the chapter on American copyright licensing law in the forthcoming treatise Cross-Border Copyright Licensing: Law and Practice (Ed- ward Elgar Publishing, Ltd.). He has been active in the American Bar Associa- tion’s Intellectual Property Law Section and has twice served on the board of trustees of the Copyright Society of the U.S.A. He is a former adjunct professor 3rd Edition 2016 vii INTELLECTUAL PROPERTY PRACTICE of copyright law at the Franklin Pierce Law Center in Concord, New Hampshire. Contact: [email protected] BRUCE D. SUNSTEIN is the founder of Sunstein Kann Murphy & Timbers LLP in Boston, where he focuses on portfolio development, litigation, and licensing of patents, trademarks, and copyrights. His practice includes bioinformatics, elec- tronic circuits and systems, computer hardware and software, communications and speech, medical devices, pharmaceuticals, and mechanical devices. Mr. Sunstein is an experienced expert witness and arbitrator in intellectual property disputes. He is the coinventor and holder of a business method patent (No. 6,985,887) covering methods for assisting in the prevention of identity theft. He is a frequent author and presenter on intellectual property law and business strategy. Mr. Sunstein is a graduate of the Boalt Hall School of Law at the University of California/Berkeley, Indiana University, and the Massachusetts Institute of Technology. He is admitted to practice in California and Massachusetts and before the U.S. District Court for the Districts of Massachusetts and Northern California; the U.S. Court of Appeals for the First, Ninth, and Federal Circuits; the U.S. Tax Court; and the U.S. Su- preme Court. Contact: [email protected] viii 3rd Edition 2016 TABLE OF CONTENTS Chapter 1 Metes and Bounds of Intellectual Property Jerry Cohen, Esq. Burns & Levinson LLP, Boston Chapter 2 Developing and Realizing Value from a Patent Portfolio Bruce D. Sunstein, Esq. Sunstein Kann Murphy & Timbers LLP, Boston Timothy M. Murphy, Esq. Sunstein Kann Murphy & Timbers LLP, Boston Jay Sandvos, Esq. Sunstein Kann Murphy & Timbers LLP, Boston Chapter 3 Understanding Patents for the Legal Advisor Bruce D. Sunstein, Esq. Sunstein Kann Murphy & Timbers LLP, Boston David E. Blau, Esq. Sunstein Kann Murphy & Timbers LLP, Boston Timothy M. Murphy, Esq. Sunstein Kann Murphy & Timbers LLP, Boston Jay Sandvos, Esq. Sunstein Kann Murphy & Timbers LLP, Boston Chapter 4 Trade Secret Law Russell Beck, Esq. Beck Reed Riden LLP, Boston Chapter 5 Noncompetition Agreements and Related Restrictive Covenants Russell Beck, Esq. Beck Reed Riden LLP, Boston 3rd Edition 2016 ix