May 31, 2020

Hello Foresight Colleagues, Clients and Friends! 

The days are getting longer, the sun is getting brighter, and while we are still officially sheltering-in-place here in the Bay Area, we are already beginning to look beyond the COVID-19 quarantine.  We continue our busy schedule of webinars.  The screen below here is from the LES "Licensing in the Age of AI" virtual conference I spoke at in May, discussing the valuation and monetization of data assets generated in the AI environment (a full recap of my talk will be featured in our next newsletter).  

The world of IP is certainly alive and kicking with developments that could have far-reaching implications.  This month we are featuring a guest blog authored by our colleague Soody Tronson, a Silicon Valley-based IP lawyer and entrepreneur, analyzing some key developments related to the patenting of artificial intelligence (AI) inventions, both here in the US as well as in Europe.  We are also featuring a blog authored by Foresight's Lynn Dudinsky, covering the recent Supreme Court decision in the copyright case related to Blackbeard's pirate ship! 

Coming up next, for our European and Japanese readers, please do not miss a webinar I will be giving on June 18th (hosted by the EU-Japan Technology Transfer Helpdesk) focused on the valuation of Brands, one of the most important intangible assets for many companies.  In the post-COVID world, with iconic brands entering bankruptcy, brand valuation is going to become critical.  

Stay safe and healthy!

Foresight Guest Blog InTheMedia

Foresight Blog Highlights ForesightBlog

In a recent decision by the Supreme Court in  Allen v. Cooper, Governor of North Carolina  the Court opined that States are immune from copyright infringement. While the Court noted that Congress may still act to remove this blanket immunity that the States have over copyright infringement, this holding makes clear that States generally have freedom to behave as copyright pirates until Congress acts. 

Following this decision, we have already seen action by multiple members of Congress, asking the U.S. Copyright Office and U.S. Patent and Trademark Office to begin a study on the extent of patent and copyright infringement by State governments.

IP News Digest  IPNewsDigest


In an effort to help independent inventors and small businesses bring "important and possibly life-saving treatments" to market more quickly, the United States Patent and Trademark Office (USPTO) is implementing the COVID-19 Prioritized Examination Pilot Program ("C-19 PEPP"). This new pilot program will expedite examination of certain non-provisional patent applications related to COVID-19. 

The heads of some of the world's largest drug makers expressed a mix of confusion and resistance to a World Health Organization  voluntary pool  to collect patent rights, regulatory test data, and other information that could be shared for developing Covid-19 therapies, vaccines, and diagnostics.  The WHO effort reflects mounting concern that some Covid-19 medical products may not be accessible for poorer populations.
 Full article here

The Supreme Court issued a  landmark ruling  in a trademark-infringement matter, holding that willfulness is not a necessary precondition to an award of profits. The unanimous ruling in  Romag Fasteners, Inc. v. Fossil, Inc.  ends years of uncertainty among the lower courts as to whether willfulness is a prerequisite to awarding profits or whether, as some circuit courts had determined, it is only an important factor to consider. 

Apple Inc.  didn't steal trade secrets when it hired away employees from an app-recommendation startup, a California state appeals court ruled.  The court ruled for Apple on Hooked's trade secrets claim. The employees may have had confidential technical information, but "showing that the employees had the information is not sufficient to establish Apple improperly acquired or used it."

On May 11, 2016, President Obama signed into the law the Defend Trade Secrets Act (DTSA) which extended the Economic Espionage Act of 1996 (EEA), which provides a broad basis for civil federal jurisdiction for the theft of trade secret thefts.  Two recent reports highlight a number of significant findings that are relevant to companies looking to protect and defend their trade secrets.

Upcoming Events  Upcomingevents
Foresight Webinars 

Date: June 18th, 2020
Time: 6:00am PT/9:00am ET/3:00pm CET
More information here  (webinar open to EU and Japanese Companies only)

LES Webinars

Date: June 3rd, 2020
Time: 12pm - 1:30pm PT/3:00pm - 4:30pm ET