How Mindfulness Can Help You Increase Your Performance — Even in the Middle of a Global Pandemic
Mindfulness is a concept that has increased in popularity in recent years, as evidenced by, for example, the increase in worldwide search volume for this term on Google Trends. Although I had heard the term “mindfulness” and was generally aware of the idea behind the term — being fully present and engaged in the moment and aware of your thoughts — it wasn’t until I was listening to a podcast on my drive into Boulder a few years ago that I decided to dig in a bit more. The guest on the podcast that day was Tim Ferriss and in discussing his book, “Tools of Titans,” he mentioned that of the more than 200 executives, leaders, and world-class performers he interviewed as the basis for his book, more than 80 percent practiced some form of mindfulness or meditation.
At the time, I had recently become a partner at Neugeboren O’Dowd, the culmination of a goal that had been set in motion 15 years earlier when I decided to attend law school & started studying for the entrance exam. After becoming a part-owner of the firm I had worked for 8+ years, I was setting new goals for myself. Upon hearing that 80 percent of world-class leaders perform some sort of mindfulness or meditation, I decided to try it myself and see why so many high performers incorporate a consistent mindfulness practice.
The Mindfulness Body-Stress Connection
Research shows that mindfulness meditation reduces the symptoms of stress, anxiety, and depression. These are things that so many of us are thinking about right now, and can have a significant impact in the workplace, even the remote ones. One UK study examined 238 healthy employees between two large companies. These employees were randomly categorized into two groups, a wait-list control group, and the practice group (who used a mindfulness meditation app). The app offered 45 guided audio meditations in 10-minute and 20-minute recordings. Over 8 weeks, the practice group completed an average of 17 meditation sessions. The result showed a drop in distress and job strain and an overall improvement in well-being. At 16 weeks, these job strains were even lower.
Another study at Google and Roche found that participants utilizing a software application as part of the study reported a 46 percent reduction in depression and a 31 percent reduction in anxiety. Other studies have shown the use of an application alone resulted in an 11 percent increase in mental resilience and a 7.5 percent increase in satisfaction in life.
Beyond help with depression and anxiety, some studies have even shown a benefit to physical conditions such as irritable bowel syndrome, fibromyalgia, and psoriasis. The Harvard Gazette reported, “Other MGH researchers also are studying the effects of meditation on the body, including Sara Lazar, who in 2012 used fMRI to show that the brains of subjects thickened after an eight-week meditation course.”
Numerous studies indicate that mindfulness lowers the cortisol and epinephrine levels that stress creates. Stress stimulates the sympathetic nervous system, and when that happens, cortisol and epinephrine surge in the bloodstream. When epinephrine (adrenaline) rates are higher than normal, you'll experience risks to the heart through increased heart rates and blood pressure. You may also experience higher cholesterol levels, lowered immunities, lower energy levels, and problems with your sleep. Mindfulness relaxes your body and mind by stimulating the parasympathetic nervous system to prevent the release of those stress hormones. People who meditate regularly can condition their bodies to de-stress on-demand, thereby improving their physical and mental health simultaneously.
The Mindfulness Success Connection
The positive effect of being in the present moment is even more important with the ongoing Coronavirus pandemic. Many of us can’t lean on co-workers, family members, and friends the way we once did. For many, the anxiety and pressure of work and life have been ratcheted up higher when working from home as this is something that many have never experienced before. Focusing on what you are doing now can reduce anxiety and pressure related to not knowing what will happen in the future.
Meditation is a unique tool to use for mindfulness. Meditation is a practice where you focus your mind on a particular thing or activity (e.g., your breath), and by doing so, you help to train your mind to focus on the task at hand. In everyday life, this can be helpful to take your mind off of things that may be bothering you and to refocus your attention. I’ve found that meditation leads to more productivity and more productivity leads to more success. Meditation provides a sense of awareness that allows me to see more wins. Awareness of small successes breeds confidence, which helps lead to greater success. Similar to physical activity, the more you do it, the more benefits you see from it.
Benjamin Franklin once said that “Some people die at 25 and aren’t buried until 75.” From my experience, mindfulness not only helps prevent this mindless going-through-the-motions of everyday life that Franklin alludes to, but it can also improve clarity in the middle of a stressful situation. Understanding that mindfulness is not only being aware of your thoughts in the present moment but also of your emotions and judgment, I’ve realized the positive effect this combination has on listening and the awareness of another person’s situation. These traits can increase the positive responses in anyone that encounters them in any line of work, regardless of whether you’re working in-office or at home.
Helping Your Team Achieve Success
Being mindful of any activity helps lead to success in that activity, and when it is lacking, distraction prevents the attainment of desirable results. With one-third of our lives spent on the job, having a successful career can lead to a happy life in general.
Consistency is Key
As with physical activity, being consistent with a mindfulness practice will lead to greater results. No, I’m not “smarter” after I meditate, but since my focus is more attuned and my stress level is better managed, I see increased results in my work product when I’m consistently applying my meditation & mindfulness routine.
Improve Remote Work Experiences
With so many people still working from home, having a homework environment that meets the needs of the employee is critical to ensuring success. Regardless of whether a mindfulness practice has been, is, or will be a part of a daily routine in their employees, employers can take action to reduce stress and create a better working environment for their employees.
One way Neugeboren O’Dowd is attempting to reduce the stress of our team is by helping them with their work from home setups. We've offered them a $1,000 stipend on anything they may need to make their home workspace more comfortable.
It could be a stand-up desk, a new chair, plants, or artwork; whatever they need to improve their space. This can support their work, their well-being, and can help them to reduce their stress levels. As shown above, reducing stress leads to an increased physical being, thereby increasing happiness & productivity.
A large portion of the country has been working remotely since March, and we don't know when this is going to end. There is so much uncertainty with this pandemic, and this uncertainty alone is triggering our stress levels. Mindfulness can help us all bring those levels down a notch.
We can't take the uncertainty away, but we can just take a few minutes a day to help us focus on only what we need to focus on. These are very simple practices that anyone can do to improve their success — even in a pandemic.
From Network Engineer to Intellectual Property Attorney: Shane Percival
By: Shane Percival
Did you know that I started my career as a network engineer? Looking back, I’m surprised I found the job I love.
A series of events led me to change careers, head to law school in 2003, and become an IP Attorney:
During my last semester at CU-Boulder’s engineering school, I had an on-campus interview with Boeing, eventually flying to Seattle and interviewing at their production facility in Everett, WA. Upon leaving that Friday, I was informed that HR would be contacting me in the next week with the final details of my offer.
The call from HR never happened. Early that following week, Boeing announced they were acquiring McDonnel Douglas & placed a freeze on hiring new grads.
Fortunately, I quickly found myself at a start-up in the Boulder area working on videoconferencing technology systems, which quickly led to working on software with Sony Electronics televisions in the San Diego area. This led to a network engineer gig - writing server scripts for a wireless multimedia startup in San Diego and eventually managing the installation of satellite data receiving and processing systems for another San Diego company.
Much of my work as an engineer involved traveling internationally to install hardware and software systems. Over one six-month stretch, I was in Hong Kong more than I was in the U.S. During another six months, I was based solely in Europe, with my company renting me flats in the Mayfair & Kensington districts so I could quickly access our customers throughout Europe. During these times, I learned the value of communication and helping others. Being patient & ensuring the customer was aware of each detail of system operation ensured the customer would come back again & again for new products.
However, my love for the engineering process began to wane over this period. My fellow engineers loved coding, frequently discussing the pet projects they were working on in their spare time. I, however, began to really enjoy the communication and operation management aspects of my work.
Around this time I started thinking about a conversation I had in engineering school:
I was in my fourth year of undergrad and a friend was graduating. His father, a D.C-based patent attorney, knew I was an engineer and he asked me if I'd ever thought about going into patent law. I had no idea what he was talking about, so he described it to me. As I began thinking about this conversation years later, I realized that my hardware and software technical background, combined with my written and oral communication skills and desire to help others could transition perfectly to becoming a patent and trademark IP attorney.
Fast forward to today and not only do I love working on and learning about new inventions every day but also helping companies secure and enforce their brands and establishing strategies for protecting a company’s most important assets.
Why an IP Attorney?
Providing a service to others that helps businesses grow and profit is what gets me out of bed every day and makes me excited to do what I do. These people and companies are relying on me and everyone at the firm they come into contact with to help ensure their businesses succeed.
I love the fact that I can help people out and make them happy. Many people helped me get to where I am today and I enjoy returning the favor to others every day.
Another reason I love being an IP Attorney is that I enjoy learning. Being an intellectual property attorney enables me to learn about new inventions and how businesses operate every day. Learning new concepts and helping others every day? To me, that’s a life well-lived and I feel lucky and blessed to have the opportunity to give what I’ve learned to people and companies that need it.
In My Spare Time
I guess since this is an article about me, I should provide some non-work related aspects of my life. I enjoy reading nonfiction books - historical, political, personal growth, and books on real estate are some that tend to find their way to my nightstand.
And like 99% of Coloradans, I enjoy many aspects of nature that this state has to offer. I try to golf, ski, run, fish, camp, and hike as much as I can around work and family. As an engineer in San Diego, I surfed as much as possible, frequently heading out around sunrise before work. Anything that can get me outside is usually something I’m interested in. To me, being outside lets me connect with nature, calming my mind, and feeding my soul. It’s also a large basis of why I promote sustainable concepts and am a champion of laws and companies that put their energy towards protecting the environment.
For example, one of my current clients provides power systems for industrial systems. They ensure that power supplied industrial devices are precise and accurate and have developed software that manages that power to ensure that their power consumption is as efficient as possible.
This isn’t a super “flashy” sustainability product like Tesla’s solar roofs. Still, it provides significant help to the environment as it decreases power consumption across multiple industrial processes. I like that I'm able to do the little bit that I do to help out the environment.
Why I Am Unique
My experience as an engineer makes me unique at Neugeboren O'Dowd.
Not only have I worked with small businesses and start-ups as an engineer, but I also worked at a very large engineering and operations organization. I’ve been a part of companies that have less than 20 engineers, a couple of hundred engineers and thousands of engineers - there were around 800 engineers in our one building in San Diego.
With this breadth of experience, I not only understand how large companies operate but also how small and mid-size companies and start-ups run their businesses. I know how operational details such as budgets and organizational charts affect IP enforcement and yearly goals.
Related: Living a White Collar Quarantine? - Pay it Forward!
Being an IP attorney provides me with the ability to interact with my clients on a daily basis, enabling me to grow personally and professionally with my clients. I feel lucky on a daily basis to have this opportunity.
How Patent Laws Affect the Race to Find a Coronavirus Cure
By: Shane Percival
Pharmaceutical companies are now in a global marathon to find an effective Coronavirus cure as soon as possible, one which can be quickly mass-produced and globally distributed. The questions on everyone’s minds seem to be:
- What happens if a COVID-19 vaccine is too expensive for most people to afford?
- If the vaccine is too expensive, can the U.S. Government intervene?
- If taxpayer money helped to fund research for a vaccine, does the public have any rights to the vaccine?
- Would a pharmaceutical company sell a Coronavirus cure at cost?
- How long will FDA & patent approval take for a Coronavirus cure or vaccine?
What Happens if the Winning Pharma Company Makes the Potential Coronavirus Cure Too Expensive for Most People to Afford?
Luckily, the United States laws allow the government to make sure those living within its borders can access patented technologies needed for the public good; for example, a patented vaccination or Coronavirus cure.
During the anthrax scare of 2001 to 2002, the U.S. government threatened to override the German pharmaceutical giant Bayer's patent on its anthrax treatment drug Cipro. This would have allowed other pharmaceutical companies to produce generic copies of the drug and provide the U.S. government with the needed dosages of the treatment. Pressure from the U.S. government, coupled with bad global publicity forced Bayer to lower Cipro's price and ramp up production to 200 million tablets over three months.
If the Vaccine is Too Expensive, Can the U.S. Government Intervene?
Yes. 28 USC § 1498 is frequently cited to enable federal agencies and third party government contractors to manufacture and/or use any invention without authorization from the patent holder without an obligation for prior negotiation with the patent holder. Many overseas governments have similar laws. So, if a company in possession of a COVID-19 vaccine fails to provide the vaccine for a reasonable cost, the U.S. & other governments could assert these laws to enable the use of the patented technology without recourse from the patent holder.
Given that the current administration is staunchly pro-corporation and anti-government interference in corporate responsibility, it remains to be seen whether this law would be implemented in the United States. Doing so would take the lawful right to manufacture a patent vaccine away from the company that validly obtained this right. It’s also unsure whether such a taking would be constitutional. If the U.S. government threatened to assert 28 USC § 1498 against a company that failed to lower the cost of a high-priced Coronavirus treatment drug or vaccine to ensure broad availability, something similar to the Bayer matter, above, may occur.
Related: New Injunction Policy Boosts Power Of Essential Patents
If Taxpayer Money Helped Fund Research for a Vaccine, Does the Public Have Any Rights to the Vaccine?
The Bayh–Dole Act from 1980 created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs. One caveat of this system is that the government can obtain the rights to those patents. Specifically, the Bayh-Dole Act states that "the Government obtains sufficient rights in federally supported inventions to meet the Government's needs and protect the public against nonuse or unreasonable use of inventions." Under this law, if a company uses a federal grant to develop a successful Coronavirus drug or vaccine, the government can use such a drug or vaccine to benefit the public.
Would a Pharmaceutical Company Sell a Coronavirus Cure at Cost?
Johnson & Johnson, BARDA, and others have announced that, should they develop a Coronavirus vaccine or treatment medication, they intend to deliver such a product at a non-profit level.
Even with the potential billions of dollars that some of these companies are spending on the R&D for a vaccine, this makes sense. Wealthier nations can pay a reasonable price for the vaccine to recoup the cost, and countries that are unable to shoulder such a burden could obtain the treatment at a price they are also able to afford. Such a company could establish a worldwide brand affinity within a generation that would be difficult to detach.
Luckily, to help in this effort, there are patent pools that enable multiple parties to access COVID-19 vaccine research and access information related to individual experiments and drug trials. One such body is the International Federation of Pharmaceutical Manufacturers & Associations - a trade body where companies share their intellectual property with developing nations. These groups will help enable wealthy nations and emerging countries to access a successful COVID-19 vaccine for their populations.
How Long Will FDA & Patent Approval Take for a Coronavirus Cure or Vaccine?
The rapid pace of development and worldwide distribution of a Coronavirus cure or vaccination conflicts directly with the speed that typically occurs for FDA approval and obtaining an issued patent. For example, it now takes around an average of 22 months from the filing of a U.S. patent application to issuance of a U.S. patent. Furthermore, it can take up to eight years for a pharmaceutical company to do enough testing for complete approval from the U.S. Food and Drug Administration (FDA), as the FDA can ask for multiple tests, studies, and experiments to ensure that a drug is effective and safe for human use.
Given the above is in direct conflict with the speed in which a cure for the Coronavirus is needed, the United States Patent Office issued new rules prioritizing the examination of COVID-19 patent applications for small and micro-entities. Similar prioritization requests are available for large entities as well. Even with this prioritized examination, the time to obtain an issued patent for a prioritized application is around eight months to allowance and around 9-10 months to issuance.
Even with this prioritized process, a vaccine will likely begin distribution without the protection of an issued patent. Since only an issued patent can be enforced, even if the creator of a vaccine failed to provide the vaccine for a reasonable cost, it is likely that the owner of the vaccine would be initially unable to prevent others from making, using, offering to sell, and selling the vaccine under 35 USC § 271, which defines infringement of an issued patent under federal law.
As it remains to be seen who will win the race to the Coronavirus cure or vaccine, the laws surrounding the ability to prevent others from copying the developed product will play a large role in how and who develops and distributes the medication or vaccine.
Related: China Seeks Patent on U.S. COVID-19 Drug
USPTO Updates Trademark Filing Requirements - But Will Spam Stop?
When you file a trademark application, you can expect to be contacted, via regular U.S. mail, by scammers. Trademark owners often receive letters in the mail from companies with very similar names as the U.S. Trademark Office, for example, the United States Trademark Company. These letters may even have the USPTO seal on them, making the letter appear legitimate and may state that trademark owners must pay a fee to obtain a registration. However, these “registrations” may simply be a private company registration wholly unrelated to the federal trademark registration being sought by the trademark owner. Unsuspecting trademark owners will send out hundreds of dollars (or more) to these companies, thinking that they’re required to do so in order to obtain their U.S. Federal Trademark registration. These letters are scams, and the money goes straight into the scamming company’s bank account. A trademark filer never has to pay official fees to anyone outside of the USPTO to register their trademark.
On February 15th, 2020, there was a change in the filing law to streamline filing. The new Trademark Office rules state that you must file electronic trademark applications and provide an additional email address for the trademark owner, separate from the attorney and correspondence information. The owner's email address requirement enables the Trademark Office to contact the trademark owner via email about their trademark.
When the new requirement of providing a client email address in trademark applications was made public, there was a quick response from trademark holders, who believed that this requirement would create more spam to the trademark holder. This time, however, the spam created would be in the form of emails as these email addresses would be public information so anyone could access that email address and send spam mail. Now, instead of just sending letters to the trademark owners, it was expected that the same trademark spammers that send the current snail mail letters would not start blasting emails to the corporate email address. Companies were concerned that they could be receiving dozens or even hundreds of scam emails every day.
Related: Did You Get Punk'd By a Trademark Spammer or Patent Troll?
Last-Minute Change
At the eleventh hour, to combat the blow-back, the USPTO changed the client email requirement. The email address can now be one created to communicate with the USPTO, or an attorney's email address, separate from the personal attorney email address in the application. Under the update, the trademark applicant or attorney can create an email address specifically for communication and correspondence with the USPTO. It does not need to be personally monitored by the trademark owner. This rule became effective on February 15th, 2020.
For applicants not represented by an attorney, the same email address may be used for the owner's address and correspondence address. This email can be set up exclusively for trademark correspondence with the USPTO. NOD suggests setting up a trademark@emailaddress.com for specific trademark application use.
It's a bit of a mundane requirement, but it can have significant effects if it's not done correctly.
Related: What Tom Brady, LeBron James & Ohio State University Can Teach You About Advanced Trademark Laws
Future Requirements
We suspect that there may be additional rules promulgated by the Trademark Office relating to electronically contacting the trademark applicant directly about their ownership. However, there haven't been any new updates since the February rule change.
How is NOD Dealing With It?
We will ask the entity filing the trademark, whether they want to provide an owner's email address, or if they prefer us to use a Neugeboren O’Dowd email address.
Although there's not a lot to this new email rule, trademark owners should be aware of the change moving forward.
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Fortress Investment Group: Bad Actor, Bad Timing, or Both?
Fortress Investment Group, a patent aggregator/investment firm, owns patents allegedly infringed by bioMérieux SA (among others) over the previous six years. In a lawsuit filed on March 9, 2020, Fortress, though its wholly-owned entity Labrador Diagnostics, is claiming bioMériux’s testing process is infringing U.S. Pat. Nos. 8,283,155 and 10,533,994. Two days after Fortress filed the lawsuit, bioMérieux announced that it was using the allegedly infringing processes to create new COVID-19 tests. This led to a large public outcry against Fortress, who then released the patents to be used for free by anyone involved with COVID-19 testing. In a statement, Fortress said that the litigation against bioMérieux SA "focuses on activities over the past six years that are not in any way related to COVID-19 testing."
Who is Fortress?
Fortress, originally a private equity firm, was acquired by SoftBank in 2017. Fortress now holds a diverse range of assets, including patents, and with respect to the ‘155 and ‘994 patents, patents that were previously owned by Theranos. Theranos has been in the news regularly since 2013, initially as a revolutionary blood-testing company and more recently related to defrauding their investors via, among other claims, the development of faulty testing devices and modifying test results. Fortress provided Theranos with a $100M investment in 2017, secured by Theranos’ patents. When Theranos ceased operations in 2018, ownership of the patents was legally transferred to Fortress.
Is Fortress merely trying to claim back some of the $100 million investment it made into Theranos' patents by suing bioMérieux SA for the last six years of unauthorized usage of its patented technology? Or is the right question to ask whether Fortress should be able to enforce the (allegedly fraudulent) Theranos patents against a potential infringer? Additionally, should a company that may have infringed another company’s protected invention be released from liability for its past acts if it is now developing technology to help mitigate the effects of a global pandemic?
Making it a COVID Issue
In the announcement issued two days after Fortress filed suit against bioMérieux SA, bioMérieux stated that it was launching three coronavirus tests in response to the COVID-19 pandemic. This announcement failed to address the issue that the company was allegedly using the same or similar tests for six years before the COVID-19 pandemic. Without addressing the six years of infringing activity, it appears that bioMérieux’s announcement was primarily designed to harvest the public's goodwill on their behalf and against Fortress. This worked, as the announcement ignited the court of public opinion against Fortress for trying to enforce its patents against a company that was trying to help the world test for COVID-19.
After being made aware of bioMérieux’s COVID-19 research, Fortress made it clear that it is not seeking any damages for the use of the patents as related to bioMérieux SA’s COVID-19 testing. Fortress has, in fact, stated those patents may be used for free during this pandemic.
Related: China Seeks Patent on US COVID-19 Drug
So, What's The Problem?
Here, it’s layered. First, we have a company (Fortress) trying to profit off of potentially fraudulently-obtained patents. Furthermore, this company is no longer making any medical testing devices and is now just suing companies who do make these devices. To top it off, these potentially infringing devices may help save lives. However, on the other side, we also have a company (bioMérieux) that could be using another company’s property without legally paying for the right to do so and have done so for six years. Furthermore, this company has not yet sought invalidation of the patents at the USPTO. And, although this company helps save people’s lives, they are also trying to legally benefit from a global pandemic by focusing the public view on their help in preventing the spread of the virus, regardless of their potential willful infringement.
Putting aside the Theranos issue for a moment and regardless of whether Fortress produces any actual medical testing devices, being unable to assert issued patents against a potential infringer due to the infringer seeking to mitigate the effects of a global pandemic could lower the incentive to develop new medical devices. It remains to be seen whether this case, among others, will deter startup medical device companies from developing new devices that can help during times of crisis if the companies can’t obtain damages for infringing activity unrelated to a pandemic.
Donating the Fortress patents to the public was not only the right call from a public relations perspective but also from a legal perspective. For pandemic-related activities, there are avenues the government can legally take to ensure the public is provided with the care they need. One such option is issuing a compulsory license on the patented item. For example, during the 2001 anthrax attacks, the US government threatened to issue a compulsory license for the antibiotic drug ciprofloxacin if the patent owner, Bayer, didn't lower the price to the government. Bayer lowered the price and the government backed down on the threat.
Related: AI and the Next Frontier in Healthcare and Patent Law
Setting Precedents
Fortress correctly gave their patented technology away, for free, to help during a national crisis. This helped mitigate some of the blowback that occurred from asserting their patents against bioMérieux. However, given the COVID-19 pandemic, the timing of their lawsuit still appears tone-deaf. I suspect SoftBank/Fortress/Labrador doesn’t have much motivation to garner public support since (a) Labrador doesn’t sell anything so they won’t see a drop in sales and (b) they know that the chance of a continued public relations blowback against Fortress/Softbank is unlikely to affect their share price.
New Injunction Policy Boosts Power Of Essential Patents
In mid-December 2019, a policy statement was issued by the USPTO, NIST, and DOJ to clearly state injunctive relief (among other remedies) is available to holders of standard-essential patents (SEPs.) This is subject to a Fair, Reasonable, and Non-Discriminatory (“FRAND”) licensing commitment against companies infringing their SEPs.
Although the new policy statement allows injunctions to be enforced against companies infringing these SEP patents, even when the SEP are subject to a FRAND commitment, the statement did not define any bright-line rule for determining when such injunctions should be granted. Instead, the statement declares that the FRAND commitment made by the patent holder, the intellectual property policies set by the Standards Developing Organization (“SDO”), and the facts surrounding the licensing negotiations between the SEP holder and the potential or actual licensee may be relevant in determining whether an injunction should be granted. With a clear statement from the DOJ that injunctions may be granted to SEP holders, it remains to be seen whether the producers of products that utilize inventions disclosed in SEPs are more likely to enter into FRAND licenses that have more favorable terms for the patent holders.
What is a SEP?
SEPs are core pieces of intellectual property that form the backbone of a new technology or development. For example, the fifth generation technology standard for cellular networks, or 5G, is one such technology that implements SEPs. These technologies become standard across various types of devices (e.g. handsets) and communication systems (e.g., data processing). Multiple companies usually develop these standard technologies, and these technologies are supported by patents filed by these companies.
To create a standard, the companies creating these technologies effectively “donate” their SEP patents to the SDO in exchange for a FRAND license from the companies implementing the standard in their devices and communication systems. Since most of the companies that provide SDP patents to an SDO also create such devices and systems, the intention of this collaboration is for companies to produce devices complying with the standard without fear of defending against multiple patent infringement suits and the need to assert their own patents against infringers.
Problems with SEPs
Frequently, what constitutes FRAND license terms, is subjective and whether a license is fair, reasonable, or nondiscriminatory may be determined by the terms for similar licenses already in the marketplace. Such a determination can be difficult and fraught with disagreement for new technology not previously sold.
In 2013, a joint policy statement issued by the Department of Justice and the United States Patents Office attempted to encourage prompt negotiation of FRAND license terms by stating that owners of these standard-essential patents may not be able to enforce their patents with an injunction against a potential infringer of the SEPs.
The application of his 2013 statement, however, prevented SEP holders from effectively asserting their rights against companies unlawfully copying their IP. Although the 2013 policy said that the injunctions may not apply to standard essential patents, it was being utilized to effectuate that injunctions do not apply to standard essential patents. This has had the potential effect of the licensees and potential licensees not agreeing to reasonable terms, leading to patent holders not obtaining fair value for their SEPs. The hope is that with the update allowing injunctions, the terms of SEPs will be more favorable to the patent holder.
The whole reason for identifying SEPs is to ensure fair use of new technology in a controlled way. If a company cannot enforce the full rights granted to SEPs, there is minimal incentive for a company to share its IP. If companies fail to see value in the SEPs system, a series of proprietary products could be introduced in addition to even greater patent litigation than what is already seen today.
Related: The Politics of Intellectual Property
How it Will Affect Existing Patents
The new policy update should help SEP holders obtain fairer terms in their FRAND licenses. SEP-holders are hoping that the International Trade Commission (“ITC”) will promptly issue rulings which state an injunction is applicable so that shipments of violating products to the United States are prevented from entering the United States at the border.
Related: 3 Ways Blockchain Will Change Intellectual Property Law
A Recent Case
On April 9th, 2020, Lenovo and Motorola filed an anti-trust case against InterDigital for allegedly violating U.S. antitrust law and contractual FRAND commitments. The lawsuit states that the violations are related to its standard-setting participation and licensing practices related to 3G and 4G SEPs. This is the latest development in a much larger case.
According to the Essential Patent Blog, InterDigital “has engaged in a multi-pronged scheme, through a combination of agreements with its competitors and fraudulent promises, to unlawfully acquire, maintain, and exploit such market or hold-up power arising solely from the alleged essentiality of patents it contends have been incorporated into the Cellular Standards.”
The latest complaint alleges that InterDigital “agreed with others in the wireless telecommunication field to restrain competition through the adoption and propagation of the Cellular Standards” and that “[t]hrough agreement, the collective action of standard-setting, and the resulting standards.”
Essentially, the case is stating that by implementing cellular standards, the company is creating a monopoly and holding power over the holders of SEP technology for 3G and 4G. They are also charging excessive royalties for 3G and 4G innovations included in products that are not related to their SEPs, and showing favoritism to other market competitors. This violates FRAND licenses.
With the new injunction policy in place, it will be interesting to see how this plays out.
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Brexit and What It Means For IP Rights
Before I went to law school, I was an engineer at a software company. At one point while working at this company, I was required to live at a couple of flats in the Mayfair & Kensington districts in London for nearly a year while providing on-site support services at our customers throughout Europe. When I wasn’t traveling to client sites, I worked at the company’s office in the City of London. Having never previously visited England, I can remember being taken aback when I was first informed by one of my colleagues in London that “we’re not European, we’re British.” So, Brexit was not much of a surprise to me.
Brexit officially occurred on January 31st, 2020, with an 11-month transition period to allow companies to get the correct IP agreements in place. At the end of this year (2020), Brexit legal changes for IP will occur. I believe that the uncertainty and worry around potential IP law complications both during and after Brexit have been a much bigger deal than the actual realities of the Brexit agreement, at least as far as IP goes. As shown below, what both governments have agreed to is pretty simple in order to ensure your IP is protected.
Trademarks & Patents
For registered trademarks, companies should note that registered European trademarks will be automatically transitioned to the UK system by the UK. This will create a new UK trademark in the UK registry. No additional steps are needed if your trademark registration is current and you have no pending EU trademark applications. Companies will, however, need to be on the lookout for their forthcoming UK trademark registration. Currently, there is no official date when the registrations will be issued. Companies should continue to monitor the UK’s trademark office website as we move closer to December 31, 2020 so they are aware when their new UK registrations are, or will become, available for review. For pending trademark applications, companies should be aware they need to convert their European trademark application to a UK trademark application by September 30th, 2021. Alternatively, you can choose not to convert the application and protect your IP only in the remaining EU countries. By 2021, companies and individuals desiring protection in Great Britain and the European Union will need to file two trademark applications, one in the EU and one in the UK. For applications filed via the Madrid Protocol, there is still some uncertainty as to how protection for these applications will work going forward, so attention there will be needed as well.
For patents issued by the European Patent Office (EPO), nothing will happen at the end of 2020 and nothing will change in the future. This is because the EPO is a separate entity from the EU and Britain will stay on as a member of the EPO. So, if you have a patent application pending at the EPO, it will stay there. If you have a European patent that was issued, there are no steps you need to take to ensure this patent continues to cover your invention for the same geographic area as prior to Brexit. Furthermore, UK patent practitioners will still file European patents with the EPO and have protection in the UK as well as other European countries.
Copyrights
Brexit hasn’t changed anything for copyrights, either. There are agreements in place, separate from Brexit, which cover copyright protection ensures that copyrights can still be enforceable in the EU and the UK.
Agreements
Do not forget about your IP agreements. You will need to check that your agreements, such as a licensing agreement or any agreement that deals with intellectual property, are applicable in the UK if they now only refer to the European Union. Another point to be aware of is that if your agreement states that it is enforceable in the EU, you may need to amend the agreement to state that the contract is binding in both the EU and UK, which may require both parties to sign the agreement once again.
Related: Protecting Your Intellectual Property: Operating, Employment, and Founders’ Agreements
A Seamless Transition
Everyone is aware that Brexit is happening so it’s critical Companies conduct due diligence on their IP assets and agreements to determine how this transition will (or will not) affect your ability to enforce these assets and agreements in the UK and the EU moving forward. Luckily, both governments are completing the transition for IP as seamlessly as possible for all parties. I expect them to continue to do so for the items that are still outstanding.
This article should be used as a guideline for what you should be aware of and your IP attorney should be contacted to ensure that all of your IP boxes are checked to ensure a seamless transition.
Related: The Right Team
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Is it Worth the Hassle to Protect Your Cannabis Brand?
As of January 1st, 2020, 33 states have legalized medical or recreational marijuana. This is great news for cannabis companies. Now the bad news: Cannabis companies are still unable to obtain trademark protection on products and services that “touch the flower”.
So, what should companies who produce and market these products do to prevent other companies from creating customer confusion with their established cannabis brand? Can existing cannabis companies prevent dilution of their famous mark? Can cannabis companies prevent other companies from negatively affecting their brand by using similar marks on defective products and with substandard services? Fortunately, and as shown below, the law provides avenues for cannabis companies to tackle these questions.
So, what’s the issue?
As is well-known in the industry, cannabis products (and services that touch the same) that contain at least 0.3% tetrahydrocannabinol (“THC”) on a dry weight basis are still listed as a Schedule I drug under the Federal Controlled Substances Act (“CSA”). As such, the sale of such goods and services is not lawful under federal law. Since a lawful sale of the goods and services listed in a trademark application must occur in order to obtain a registered U.S. trademark and any sale of products containing at least 0.3% tetrahydrocannabinol (“THC”) on a dry weight basis is unlawful under the CSA, the Trademark Office must deny registration of any trademark that lists such goods, or services that touch the same, in the application.
For large cannabis companies, this can translate to increased risk and costs if protection isn’t properly sought.
Related: What Tom Brady, LeBron James & Ohio State University Can Teach You About Advanced Trademark Laws
Strategies for Cannabis Companies
Despite the limitations to federally protecting your cannabis brands, cannabis companies should consider implementing one or more of the following brand protection strategies:
Use the 2018 Farm Bill
The 2018 Farm Bill removed hemp-derived products, including CBD, from the list of controlled substances, legalizing its sale. Companies can now obtain federal trademark protection for products and services that contain cannabis having less than 0.3% THC by weight. If you’re a cannabis company that sells products or services for products containing THC above this limitation, you should consider also providing products and services for products that fall under this boundary. Doing so will enable you to obtain protection for your valid products. Such protection will also help you to prevent others from selling Schedule I products and services under a confusingly similar name in jurisdictions that allow such sale under state law. Furthermore, if and when this 0.3% THC limitation is raised or eliminated, your valid registration may legally extend to products that contain greater amounts of THC under the “zone of natural expansion”. Besides taking advantage of this new law, if you’re a cannabis company and your products or services currently have a THC level above the allowed amount, you should also be…
Trademarking Other Products
This is similar to the 2018 Farm Bill recommendation above, except that you should be seeking to protect your mark in association with products and services that either do not include cannabis at all, and/or are at least not “touching the plant.” Protecting your brand for these non-cannabis goods and services can be helpful to prevent others from using a similar mark for related goods and services. Depending on the nature of these goods and services, your registration may extend to cannabis products as well.
Under this strategy, a U.S. trademark registration was recently obtained for a product/service in the cannabis space that’s not directly related to the sale of Schedule I marijuana. Tökr is an app that allows consumers to search for prices and product information on both medical and recreational marijuana dispensaries. Even though Tökr's registration documents mention marijuana, Tökr was able to obtain a registration because it was only providing services and products related to advertising and was not actually selling, providing, shipping or otherwise “touching” Schedule I cannabis.
In another example, when the owner of the www.unitedpostsmoker.com domain created a mark for their cannabis products and delivery/logistics services that included a similar shield logo as the registered United Parcel Service (“UPS”) shield logo, UPS was ultimately able to obtain a permanent injunction against the company. By arguing that the infringing mark and other marks created irreparable harm against various UPS brands, UPS was able to prevent the infringing company’s use of not only the infringing shield but also of numerous domains and other marks. Similar cases involving Tapatio hot sauce and Gorilla Glue claimed brand dilution and irreparable harm and resulted in marijuana products with similar names removed from sale.
So… if you don’t have any other products to register (or even if you do), you need to:
Obtain State Trademark Registrations
OK, first the downside: If you intend on providing your flower-touching product or service in all of the states that allow for at least some legal marijuana consumption, you should obtain protection for the brand and/or logo under which you will be providing your goods or services in no less than 33 states. Done properly, this will entail understanding what rights are associated with filing for a state trademark in each state, how to enforce those rights, and what is required to maintain those rights. That not only takes a lot of time, but also you need a legal expert to ensure compliance with each state’s requirements. For example, in some states, like Colorado, even with a state trademark registration, protection for your mark is only provided to the geographic areas in which you are actually selling/using your product. So, if you're only selling it along the Front Range, you're only protected in that area. On the upside, however, there are states where registration breaks across the entire state, regardless of the scope of use for your mark. Depending on your situation, you may want to adjust your protection scheme accordingly. Even with the limited protection in states like Colorado, however, a state trademark registration may provide others notice of your registration and may discourage attempts to use and register a similar mark in that state, in other states, nationally, or internationally. Until federal legalization of marijuana occurs, seeking state trademarks should be an arrow in every cannabis company’s IP quiver.
Cannabis companies should also...
Consider Global Protections
Given that there are over forty countries that have legalized medical marijuana and around half a dozen that have either fully legalized the sale of marijuana (e.g. Canada) or have certain restrictions on the sale (e.g. Australia), you should at least consider whether it makes financial sense for your company to seek protection of your brand in these foreign jurisdictions, and others.
Finally, cannabis companies should certainly -
Leverage Additional Available IP Protections
Artistic designs and web content on a brand can be submitted for copyright registration. Along these lines, the look and feel of your product packaging should be analyzed for unique protection aspects. Furthermore, design and utility patents can be obtained for unique product shapes or for unique features or methods of use.
After taking into account the above protections available for cannabis companies, the bottom line is that there are numerous ways to protect your company’s brand and unique IP, regardless of the space you’re in. In some instances it may be difficult, but not impossible, to protect brands against third parties attempting to trade off the goodwill you've established in the marketplace and against deceptive practices and unfair competition. You have to keep all of these avenues open as you move forward launching your product globally.
Related: Yes, You Need a Registered Copyright
The Future for Cannabis Companies
A change in federal trademark law for cannabis companies is solely dependent on a change in the federal legal status of cannabis. There is a current push from the public, the media, and congress to remove marijuana from its classification under the Controlled Substances Act. But when, or even if, that will happen is still an open question. Regardless, barring any negative press or the release of new facts about marijuana use, companies should prepare for its removal while ensuring continued protection until that date. By utilizing the protections described herein cannabis companies can ensure the brands are not only protected, but thrive.