Are your Intellectual Property Assets Protected?

Covering Your Assets: Identify and Protect your Business' Intellectual Property 

by Crystal Broughan, Intellectual Property Law Attorney 

Do you have an inventory of your company’s intellectual property (IP) assets?  Do you even know what is considered an Intellectual Property asset?  Intellectual Property is everywhere in the world of business and business owners should make sure they protect their assets since intellectual property is crucial to the success of their business.  

Types of IP assets:

Trademarks are brands, logos, service marks, collective marks, and trade names;

Copyrights protect the expression of ideas – software code, websites, curriculum, how-to-manuals, paintings, books, sculpture, audio and visual recordings, musical and dramatic works.

Patents are for the protection of technical and functional inventions of products and processes that are new and not obvious.

Trade Secrets - all forms and types of financial, business, scientific, technical, economic, or engineering information if the owner has taken reasonable measures to keep them secret and the information derives independent economic value from not being generally known.

Actions you should take:

Conduct an audit to identify all registered and unregistered trademarks and copyrights.  Include all patent registrations and inventions that you intend to patent or keep as a trade secret.

Invest in well written and up to date non-disclosure agreements.  Make sure all of your employment and vendor agreements, licensing agreements, sales contracts and technology transfer agreements protect your IP assets.

File trademark applications for all unregistered word marks, service marks, logos, collective marks and trade names.

File copyright applications for materials you have developed such as your websites, software code, curriculum, how-to-manuals, logos that you are using, graphics that you are using to promote products and services, etc.

File patent applications before you publish a new invention.  Once you disclose publicly an invention you must file an application within one year or you lose the right to obtain a patent registration. 

If you decide you want to keep an invention, process or formula as a trade secret instead of filing for a patent, make sure you actively take reasonable measure to keep the information secret.

Save money in the long run by working with an IP lawyer who can advise you on trademark, copyright and patent registrations, review your business agreements and contracts for the protection of all IP assets.  Sometimes what appears to be simple at first turns out to be more complex than you originally considered.  A trademark or patent application can be rejected for small details that were not included in the original application.

Consider the future of your company:

Properly protected IP assets add value to your company if you intend to sell it in the future.

If your IP assets are protected you are in a better position to protect your company and brands from copycats who infringe on your brands and ideas. 

You may decide you would like to license your brand or products to a third party as you expand your business.  So you will want to make sure the brand is registered and the products properly protected.

You may expand your sales of products or services to other countries in which case having US trademark registrations in place will help in the trademark application process in with other countries.

Better to act now in protecting your valuable IP assets instead of waiting until it is too late when someone takes your brand, product or client list and opens their own business. 

Crystal Broughan is an intellectual property law attorney with Marks Gray, P.A.  If you would like to learn more about Marks Gray’s intellectual property law services please contact Ms. Broughan at cbroughan@marksgray.com or 904-807-2180.

Ten Attorneys Named to the 2016 Florida Super Lawyers List and Two Named to 2016 Florida Rising Stars List

Marks Gray Attorneys Named Super Lawyers and Rising Stars 

We are pleased to announce that ten attorneys from Mark Gray, P.A. have been selected to the 2016 Florida Super Lawyers list. This is an exclusive list, recognizing no more than five percent of attorneys in Florida. Two of our attorneys were named to the 2016 Florida Rising Stars List.

The Marks Gray Attorneys on the 2016 Florida Super Lawyers list and their categories of selection are as follows:

                                Jeptha F. Barbour, Personal Injury General: Defense

                                Jill F. Bechtold, General Litigation

                                Edward L. Birk, Communications

                                Giselle Carson, Immigration: Business

                                William M. Corley, Personal Injury Products: Defense

                                John R. Crawford, Estate Planning & Probate

                                Susan S. Erdelyi, Employment & Labor

                                Frederick H. Kent, III, Real Estate

                                Nicholas V. Pulignano, Jr., Business Litigation

                                Gerald W. Weedon, Business Litigation

The Marks Gray Attorneys on the 2016 Florida Rising Stars list and their categories of selection are as follows:

                                Meagan L. Logan, Civil Litigation: Defense

                                Heath L. Vickers, Civil Litigation: Defense

Super Lawyers, part of Thomson Reuters, is a research-driven, peer influenced rating service of outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Attorneys are selected from more than 70 practice areas and all firm sizes, assuring a credible and relevant annual list.

The annual selections are made using a patented multiphase process that includes:

• Peer nominations
• Independent research by Super Lawyers
• Evaluations from a highly credentialed panel of attorneys

The objective of Super Lawyers is to create a credible, comprehensive and diverse listing of exceptional attorneys to be used as a resource for both referring attorneys and consumers seeking legal counsel.

The Super Lawyers lists are published nationwide in Super Lawyers Magazines and in leading city and regional magazines and newspapers across the country, as well as the Florida Super Lawyers Digital Magazine.

Please join us in congratulating all of the attorneys on their selections. For more information about Super Lawyers, go to SuperLawyers.com.

U.S. Supreme Court 4-4 Decision on DACA and DAPA leaves many Immigrants on hold

Shareholder Giselle Carson Shares her Insight on yesterday's United States v. Texas ruling

Original Post published on Giselle's blog here.

by Giselle Carson, Esq. 

Today, in the United States v. Texas, the case challenging the expanded Deferred Action for Childhood Arrivals (DACA) and Deferred Action for Parents of Americans and Lawful Permanent Residents (DAPA), the U.S. Supreme Court affirmed by an equally divided court.

This means that the ruling by the Fifth Circuit’s decision stands and there will be no further movement in this proposal at least during the Obama administration.  The proposed expansion would have shielded up to 4 million immigrants from potential deportation and make them eligible for work permits.

This ruling does not impact the original DACA program launched in 2012.   The decision is disappointing for many immigrant families, workers, and employers.

To read the full decision  and explanation of the ruling, visit The SCOTUS blog.

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Giselle Carson, Shareholder at Marks Gray, P.A. primarily practices in the areas of business immigration, sports immigration, I-9 compliance and audits and litigation. She is a frequent author and speaker on immigration matters. 

Immigration FAQs answered by Giselle Carson

Shareholder Giselle Carson Answers the most Frequently Asked Questions regarding the Immigration process and filings 

In an effort to assist you and save you time during the Immigration process, the Marks Gray Immigration Team has compiled a list of some of the most frequently asked questions on immigration topics. For more detailed information about any of these subject, please contact the Marks Gray team. 

• FAQ: National Visa Center Processing
• Alternatives to Cap-Subject H-1B Petitions
• Document Retention for Employers
• Electronic Travel Authorization (eTA)
• General Instructions for Consular Processing
• H-1B Preparation - Staying Ahead of the Game
• Labor Certification Process:The First Step to an Employment Based "Green Card"
• Perm Recruitment
• Student Options for Visa Extensions 

For the full list of FAQs, visit Giselle's Immigration site. 

The Federal Defend Trade Secrets Act: Thoughts for Employers and Business Owners

In May 2016, President Obama signed into law the Defend Trade Secrets Act (DTSA or Act).  The Act brings the federal protection of trade secrets on par with corresponding laws that apply to the other pillars of intellectual property, copyrights, patents, and trademarks.  

What is a trade secret –   The Act broadly defines “trade secret”:

(3) the term “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—

                (A) the owner thereof has taken reasonable measures to keep such information             secret; and

                (B) the information derives independent economic value, actual or potential,    from not being                 generally known to, and not being readily ascertainable through proper means by another                 person who can obtain economic value from the disclosure or use of the information;

18 U.S.C. § 1839(3)

What it does - The Act amends several sections of Title 18 of the United States Code and specifically section 1836 to allow a federal right to action for a party that claims to be the victim of trade secret misappropriation.   Prior to the passage of DTSA, the only federal remedy for the theft of trade secrets was a criminal action brought under the Economic Espionage Act of 1996 (EEA).  There were no federal civil remedies for misappropriations of trade secrets.  A Party could seek civil remedies in some states such as Florida, that adopted the Uniform Trade Secrets Act (UTSA) in 1988.[1]   However, not every state adopted the UTSA. 

Protection for whistleblowers - The Act includes a provision to protect whistleblowers who reveal that a business is engaging in or has engaged in (knowingly or unknowingly) the misappropriation of trade secrets.  The whistleblower provision also grants immunity, on both the federal and state level, for the disclosure of a trade secret if the disclosure:

                (A) is made

(i) In confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and;

(ii) Solely for the purpose of reporting or investigating a suspected violation of law; or

(B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.

18 U.S.C. § 1833 as amended by § 7(b)(1) of DTSA.

Anti-retaliation provision – The Act has an anti-retaliation provision that is geared at stopping a business from retaliating against an employee who brings to light the business’s misappropriation of trade secrets.  Like the whistleblower immunity, but not as broad, the Act permits an employee, who is reporting an employer’s suspected violation of trade secret law, to disclose the trade secret to her attorney and use the trade secret information in related litigation.  However, the disclosure must be filed under seal and cannot be disclosed to third parties without a court order.[2]

Required notifications to employees – Under the DTSA, the two above-mentioned provisions, and the rights provided by them, must be communicated to the employee by the employer.  This notification provision of the Act extends to independent contractors as well.[3]  The Act provides that notice can be effectuated by inserting specific language into employee contracts (or agreements) or by inserting the language in the business’ policies and placing a cross-reference to the policy in revised employee and contractor contracts (or agreements).[4] 

Lack of penalties –There are no express penalties for a business if it fails to comply with the notice requirements.  The Act does provide that, if an employer fails to comply with the notice requirement and does not communicate the anti-retaliation or whistleblower protection to its employees, the employer may not be awarded attorney’s fees or exemplary damages in an action for trade secret misappropriation against an employee.[5] 

Ex parte seizures –The DTSA contains an ex parte seizure provision.  The ex parte seizure provision allows a party to seize the assets of a competitor if the party can show a court that there has been a misappropriation of a trade secret.  This type of injunctive relief will only be granted in extraordinary circumstances where a court clearly finds that granting the seizure outweighs the harm to the third party subject to the seizure.[6]  Accordingly, the party seeking the injunction has a high burden of proof before a court allows the seizure of another business’s assets.

What does this mean for you as an employer -

-          Update employment, non-disclosure, proprietary information, invention assignment and other agreements and policies that govern the use of a trade secret or confidential information to ensure compliance with the DTSA;

-          If you do not have existing policies regarding trade secret information then establish such policies;

-           Consult with your intellectual property or employment attorney to ensure that your business is or will soon be in compliance with the Act’s various provisions.  The mandatory notification provisions should be addressed as soon as possible. 

The Act is a significant development in the realm of intellectual property.  Trade secrets give a business a competitive edge.  Whether it is the recipe to a food chain’s secret sauce or the client list of a hedge fund; trade secrets, and the protection of them, can be the determining factor in the success of a business.  Accordingly, this Act will impact the trade secret practices of local, national, and international businesses alike.

Crystal Broughan is an intellectual property law attorney with Marks Gray, P.A.  If you would like to learn more about Marks Gray’s intellectual property law services please contact Ms. Broughan at cbroughan@marksgray.com or 904-807-2180.

Special Assistance from Dion K. Bass, Marks Gray Summer Law Clerk - 2016

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[1] Fla. Stat. §688.004 (2015).

[2] 18 U.S.C. § 1833 as amended by § 7(b)(2) of DTSA.

[3] Id. as amended by § 7(b)(4) of DTSA.

[4] Id. as amended by § 7(b)(3) of DTSA.

[5] Id. at § 7(b)(3)(C) of DTSA.

[6] 18 U.S.C. § 1836 as amended by § 2(b)(2) of DTSA.

June 2016 Immigration Bulletin is Out!

Summer Fun and Success Story: A Green Card for an Athlete

June 2016 Immigration Bulletin

by Giselle Carson

Hello, and Welcome to our June Immigration Update! 

 

In this edition, I review the milestones of the H-1B FY17 and future processing, provide tips for employers’ compliance with the new STEM OPT training plan, review the options for updating your address with USCIS and much more.  

I also share one of our recent success stories and encourage you to kick off the Summer supporting our foreign athletes.  While Jacksonville may not be home to notable immigrants like baseball star Albert Pujols, tennis sensation Anna Kournikova, or basketball giant Yao Ming, we have our own mix of remarkable athletes who've migrated to our great city.  Some of the most recent additions come to us to join our professional soccer team, the Jacksonville Armada, and our Baseball team, the Suns.  I hope that you get a chance to experience the excitement of these games and support our athletes.  

To stay updated on current immigration issues and read more client success stories we invite you to subscribe to our blog.

 

Thank you for your readership, support, and referrals.

 

Cheers!

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Are You Trying to Understand the New STEM OPT Rules? I have Tips for You!

Employers, foreign students, and schools are looking for best practices to complete the new Form I-983, Training Plan. With this in mind, I have published a White Paper to assist. The paper provides examples to complete the training program goals and objectives and measure the training effectiveness and outlines key provisions of the 24-month STEM extension.

To read the paper in its entirety and download a copy, click here. 

 

H-1B FY17 Cap Updates

As per our prior updates which we link to below, USCIS completed the H-1B Cap Random Lottery Selection Process April 9^th, 2016.

Original Article about FY17 Cap Posted Here.

Below is an outline of key events during this process and what to expect for the remainder of this process: 

April 12 - We started receiving the first receipt notices via email from USCIS Premium Processing (PP) about the selected cases.

Original Article regarding completed lottery posted here.

April 21 – We started receiving receipt notices for the cases that were filed using regular processing.

May 2 – USCIS issued a notice indicating that it had completed the data entry for all petitions and we stopped receiving receipt notices.

Original Article Here. 

May 10 to August 8 - The 17-Month STEM OPT extension applications submission.

STEM OPT Extension Update and articles regarding limited filing opportunity original posting here.

May 12 – USCIS started adjudicating Premium Processing (PP) filed petitions.

Information on PP petitions and delayed timeline associated with them here.

May 27 – Our PP filed petitions had all been adjudicated.

June to September – USCIS will return cases not selected in the lottery with uncashed filing fee checks.

June to September 30 – USCIS will process and adjudicate regularly filed cases.

Last year, most cases were adjudicated by September 30.  However, some cases that received requests for additional evidence (RFE) were still awaiting a decision in early October.

We will update our clients with pending petitions that were filed using regular processing as we receive more information from USCIS.

 

 

Notifying USCIS of Address Change

You must notify USCIS of your address changes in one of the following ways:

1. Online: USCIS Online Change of Address (recommended)*

1. By mail: Download Form AR-11 and Instructions (PDF, 1 page - 370 KB) or

1. By calling 1-800-375-5283.  If you call, you will still need to complete and submit the AR-11 form noted above. 

 

How soon after my move should I notify USCIS of my new address?

Most non-U.S. citizens must notify USCIS of a new address within 10 days of moving.

U.S. Citizens are required to notify USCIS of a change of address if they have previously submitted a Form I-864, Affidavit of Support, on behalf of someone who has become a permanent resident. If you have previously submitted a Form I-864 for someone who immigrated to the U.S., and that sponsorship agreement is still in force, you must complete a Form I-865, Sponsor’s Notice of Change of Address, within 30 days of the change in address.

 

Is changing my address with the post office enough?

No. If you only change your address with the post office, you may not receive important notices about your case.   U.S. Postal Service does not forward most USCIS correspondence. 

Do I have to submit a change of address for every pending application or petition?

Yes. To ensure that all USCIS correspondence is sent to your current address, you must submit a change of address for every pending application and/or petition that you have with USCIS. 

 

Where can I find additional information about reporting an address change to USCIS?

Additional details can be found at:  How Do I Report a Change of Address to USCIS?

 

High Demand for EB-1 Visas to Force Cut-Off Date

Because employers and foreign nationals are looking for alternatives to the H-1B cap, the Department of State (DOS) and USCIS have advised that there has been a significant high demand for visas in the EB-1 category.  DOS has said that should the demand continue to remain at the same rate, some form of “corrective action” would be necessary before the close of the fiscal year to regulate worldwide visa numbers. This may require the establishment of a cutoff date or other form of regulation.

Read full blog post here.
 

June Visa Bulletin: EB-2 & EB-3 Retrogression

The demand for the EB-2 employment-based category is also very high.  As a result of the ongoing high demand for visa numbers for EB-2 India and lack of access numbers from EB-2 worldwide which could have been used for India, the EB-2 India final action date retrogressed to October 1, 2004. The DOS expects that the EB-2 India cutoff date will advance slowly for the rest of the fiscal year, at a pace similar to the EB-3 advancement.

Similarly, the EB-2 and EB-3 employment-based for China final action cutoff date have retrogressed to January 1, 2010. The cutoff dates for EB-2 and EB-3 are expected to remain unchanged for the remainder of the fiscal year, therefore, applicants will have no incentive to downgrade from EB-2 to EB-3.

Full blog post here.

 

Success Story: EB-1 Extraordinary Ability Approval for Professional Soccer Player 

Pro L, an Argentinian professional soccer player, came to our office for help obtaining a Green Card based on his “Extraordinary Ability” (an EB-1, I-140 petition) as a soccer player.

We met and reviewed his entire professional career. We carefully organized and identified evidence of his extraordinary roles, sharp and crisp skills under pressure, and employment with distinguished teams. We selected and included evidence of the wins of his teams in sought after championships as a result of his performance.  We also incorporated evidence of the major media coverage he received for his contributions including appearances on ESPN, interviews, and newspaper articles. The filing also contained evidence as to how Pro L’s work as an athlete benefits the ongoing growth of soccer in the U.S.

USCIS agreed with us and his I-140 petition was approved. I’m honored to work with athletes of extraordinary talent and their teams. As a marathoner and Ironman triathlete, I’m inspired by the accomplishments and discipline of these athletes. Despite multiples accolades, Pro L and his family are amazingly friendly and down-to-earth.   We look forward to his ongoing contributions to our country.

Congratulations to Pro L and his family!  

You can view the original newsletter by clicking this link.