Intellectual Property Practice

761 Pages·2016·3.724 MB·English

by  Jerry Cohen, 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, Bruce D. Sunstein

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
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Printed in the United States of America
This publication should be cited: Intellectual Property Practice (MCLE, Inc. 3rd ed. 2016)
Library of Congress Control Number: 2015959809
ISBN: 1-57589-936-1
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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 edi-
tion 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, copy-
right, 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 commit-
tee. 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 preven-
tion 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 intellectu-
al 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 of-
fice. 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 infringe-
ment; 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 fre-
quent 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 trade-
mark, 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 pa-
tent portfolios in highly advanced fields of technology. He is experienced in devel-
oping, 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 prop-
erty 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 pro-
tecting some of the world’s leading brand names from infringement and is respon-
sible 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 present-
er 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, med-
ical devices, chemistry, health care, and analytic scientific equipment. His prac-
tice 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, cur-
rently 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