INTRODUCTION
A Non-disclosure Agreement (NDA) is legal contract between you and at least one other party to not disclose specific shared information. NDAs are used to share confidential information with another party while legally forbidding that party from disclosing the information.

TYPES
NDAs are either two-way or one way. A one-way NDA is used when only one party is sharing information and the other party agrees to keep it confidential. A two-way NDA is used when both parties are sharing confidential information with each other and both agree to keep information shared by the other confidential.

COMMON SECTIONS TO BE INCLUDED

1. A listing of the parties in the agreement
SAMPLE EXCERPT
This NON-DISCLOSURE AGREEMENT (this “Agreement”) is made and entered into as of the __ day of _________, 2012, by and between _______________, a _______ ___________ (including its affiliates), and ________, INC., a _____ corporation (including its affiliates). _______ and _____ may each be referred to herein as a “Party,” and collectively, as the “Parties.”
The Parties have expressed interest in a possible business transaction which may involve the development of products or services through the use of proprietary information (a “Transaction”).

2. Define confidential information. List all information to be held confidential.
SAMPLE EXCERPT
For purposes of this Agreement, “Confidential Information” means all information provided or made available by or on behalf of ____ in connection with the evaluation or negotiation of the Transaction, whether furnished before or after the date of this Agreement, whether or not labeled or otherwise identified as confidential and regardless of the form or format of the information (written, verbal, tangible or intangible, electronic or otherwise) or the manner or media in or through which it is furnished to or otherwise obtained by the ___ or any officer, director, employee, agent, partner, member, manager, lender, adviser or other representative (including any accountant, attorney or financial advisor) (each, a “Representative,” and collectively the “Representatives”) of the ____, including, without limitation, all nonpublic personal information regarding customers, consumers or employees of _____ that may be disclosed under this Agreement (“Consumer Information”), the terms of this Agreement or any subsequent agreement concerning the possible or actual formation of a Transaction. The term “Confidential Information” also includes all reports, analysis, notes, studies, forecasts, compilations, interpretations or other information based on, containing or reflecting any Confidential Information. Notwithstanding anything contained herein to the contrary, Confidential Information shall not include information that: (a) is or has become generally known to the public through no direct or indirect act or omission of the _____ or any of its Representatives; (b) was already known by, or is or becomes lawfully available to, the ____ or its Representatives from a source other than ____ or its Representatives and who is not prohibited from disclosing the Confidential Information to the _____ by any contractual, legal or fiduciary obligation; or (c) the _____ demonstrates by written evidence was independently developed by the ____ or its Representatives without any reliance on the Confidential Information. Confidential Information will not be deemed to be generally know to the public solely by reason of having been included in a patent or copyright application filed in a country in which such applications are not kept confidential or are published as part of the patenting or copyright process. “Generally known to the public” means only information that is generally known to the public in the country in which the Confidential Information is sought to be used, and does not include information that can be derived only through significant expenditure of time or effort to assemble, compile or reconstruct, even though individual portions of the information may be publicly available.

3. Definite confidentiality obligations.
SAMPLE EXCERPT
(a) The _____ shall maintain in strict confidence the Confidential Information and will use the Confidential Information solely for the purpose of evaluating and consummating a Transaction and for no other purpose. The ____ shall not, without the prior written consent of ____, disclose or permit to be disclosed any Confidential Information to any person other than the _____ Representatives who are assisting in the evaluation and performance of a Transaction and who reasonably need to know the Confidential Information. Such persons shall be advised by the Company of the confidential nature of the Confidential Information and shall be bound to keep the same confidential to the same extent as the Company. The ____ shall be liable for any violations of this Agreement by any of its Representatives.
(b) The ____ shall take all reasonable measures to protect the secrecy of, and avoid disclosure or use of, the Confidential Information in order to prevent it from falling into the public domain or the possession of persons other than those persons authorized under this Agreement to have access to the Confidential Information. Such measures shall include, but not be limited to, the same standard of care that the ____ uses to protect its own Confidential Information, which shall be no less than a reasonable standard of care.
(c) Without the prior written consent of _____, the _____ will neither itself, nor permit any of its Representatives to, disclose to any person any information with respect to (i) the fact of its receipt of, or access to, any Confidential Information, (ii) the fact, nature or status of any discussions between ______ and the _____, or (iii) any other facts or information with respect to the nature, terms or status of a Transaction.
(d) The _____ agrees to notify _____ in writing of any actual or suspected breach of this Agreement, including, without limitation, any misuse, misappropriation or unauthorized disclosure of the Confidential Information that comes to the attention of the _____ or any of its Representatives.

4. Define the disclosure period and the length of confidentiality.
SAMPLE EXCERPT
This Agreement shall be effective on the date last below written and shall continue in full force and effect until ____ supplies Company with the last item of Confidential Information and at all times thereafter. The obligations of ____ hereunder shall survive any termination of discussions regarding the Transaction between ____ and Recipient. Unless otherwise agreed in writing, this Agreement shall govern Confidential Information disclosed by ____ to ____ prior to (as well as after) the effective date hereof.

To be continued…

NOTE: The SAMPLE EXCERPT provided here are not tailored to your particular needs and situation and should be not used as such. Please consult a qualified attorney to create a NDA according your needs.

In certain cases it is appropriate to use a catalog as a specimen for goods. The standard is that the specimen must show the mark as used on or in connection with the goods in commerce. More specifically, a trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. 37 C.F.R. §2.56(b)(1). In the case of Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992), the applicant had applied to register “KETCH” for purses. The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods.

A catalog will meet the criteria for display associated with the goods provided that it: “(1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark sufficiently near the picture or textual description of the goods to associate the mark with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).” TMEP §904.03(h)

For more information on trademark specimens, contact your intellectual property attorney. We are located near Downtown Los Angeles, in the City of Pasadena, California.

Your right to protect your invention may be affected when you tell your invention to others. Disclosure of your invention can cause you to lose your ability to obtain a patent. After a printed publication of your invention, you have one year to file for a patent. After the year elapses, you are barred from patenting the invention. The term “printed publication” has a much broader meaning than a layperson might think. Distributing even a single copy of a document can trigger the one-year period – even a poster presentation, marketing materials, or a college thesis.

By treating your disclosures and documents as confidential, you can avoid triggering this statutory bar to patenting your invention. Whenever, disclosing your invention, the best practice is to have a Non-Disclosure Agreement (NDA) or Confidentiality Agreement with the party you are disclosing to. An exception is when you are discussing your invention with your attorney, because strict confidentiality rules already apply to attorney-client communications.

According to the U.S. Copyright Office: “There is no such thing as an ‘international copyright’ that will automatically protect an author’s writings throughout the world. Protection against unauthorized use in a particular country depends on the national laws of that country. However, most countries offer protection to foreign works under certain conditions that have been greatly simplified by international copyright treaties and conventions. There are two principal international copyright conventions, the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and the Universal Copyright Convention (UCC).

The United States became a member of the Berne Convention on March 1, 1989. It has been a member of the UCC since September 16, 1955. Generally, the works of an author who is a national or domiciliary of a country that is a member of these treaties or works first published in a member country or published within 30 days of first publication in a Berne Convention country can claim protection under the treaties. There are no formal requirements in the Berne Convention. Under the UCC, any formality in a national law can be satisfied by the use of a notice of copyright in the form and position specified in the UCC. A UCC notice should consist of the symbol © (C in a circle) accompanied by the year of first publication and the name of the copyright proprietor (example: © 2006 John Doe). This notice must be placed in such a manner and location as to give reasonable notice of the claim to copyright. Since the Berne Convention prohibits formal requirements that affect the “exercise and enjoyment” of the copyright, the United States changed its law on March 1, 1989, to make the use of a copyright notice optional. U.S. law, however, still provides certain advantages for use of a copyright notice; for example, the use of a copyright notice can defeat a defense of “innocent infringement.” Even if a work cannot be brought under an international convention, protection may be available in other countries by virtue of a bilateral agreement between the United States and other countries or under specific provision of a country’s national laws. (See Circular 38, International Copyright Relations of the United States.)

An author who desires copyright protection for his or her work in a particular country should first determine the extent of protection available to works of foreign authors in that country. If possible, this should be done before the work is published anywhere, because protection may depend on the facts existing at the time of first publication. There are some countries that offer little or no copyright protection to any foreign works. For current information on the requirements and protection provided by other countries, it may be advisable to consult an expert familiar with foreign copyright laws. The U. S. Copyright Office is not permitted to recommend agents or attorneys or to give legal advice on foreign laws.” U.S. Copyright Office, FL100

For further information on international copyright protection or international copyright conventions go to www.wipo.int or contact your Copyright Lawyer. We are located just outside of Downtown Los Angeles in the City of Pasadena.

The Trademark Trial and Appeal Board (TTAB) has a standard Protective Order that is automatically in place to govern the exchange of information. It is not necessary for the parties to sign the Protective Order. The parties may agree to an alternative order, which will be entered upon stipulation approved by the TTAB. Or, either sidemay make a motion to have an alternative Protective Order implemented. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) §412.

The Standard Protective Order provides three degrees of protection for confidential information: 1) Confidential, 2) Highly Confidential, and 3) Trade Secret / Commercially Sensitive. All three tiers are protected from view by the public. Parties and their attorneys will have access to information designated as Confidential and Highly Confidential, subject to any agreed exceptions. Outside counsel, but not in-house counsel, shall have access to information designated as Trade Secret / Commercially Sensitive. TBMP §412.01.

TTAB Standard Protective Order: www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp
For more information on TTAB proceedings please contact your trademark attorney or intellectual property lawyer. We are located just outside of Downtown Los Angeles in the City of Pasadena.

The SOPA online piracy bill that helped spark this week’s unprecedented Internet protests will be redrafted. The news came shortly after the Senate postponed a key vote on the companion PIPA bill amid calls for consensus before Congress moves forward on any legislation to address the problem of foreign piracy websites.

Both SOPA and PIPA faced controversy from tech companies and Internet lovers everywhere, but recently gained widespread attention after popular websites like Google and Wikipedia were blacked out to protest the pending legislation.
If enacted, major media companies would have had the ability to shut down any site that is making commercial gain off of copied material without explicit consent of the content owner. The legislation was aimed to protect movie and music industries, which have cited substantial financial losses—an estimated $58 billion annually, according to the Institute for Policy Innovation (IPI)—due to piracy and online trafficking.

The bills are strongly backed by the entertainment industry and had been on a fast track to approval. But the protests led several co-sponsors of the legislation to pull their support, with numerous other lawmakers vowing to oppose the legislation in its current form out of concern that it could squelch free speech on the Internet and lead to the shutdown of legitimate sites.

H.R.3261 - Stop Online Piracy Act

The Stop Online Piracy Act (SOPA), also known as House Bill 3261, is a bill that was introduced in the United States House of Representatives on October 26, 2011.  The bill, if made law, would expand the ability of U.S. law enforcement and copyright holders to fight online trafficking in copyrighted intellectual property and counterfeit goods.

The originally proposed bill would allow the U.S. Department of Justice, as well as copyright holders, to seek court orders against websites accused of enabling or facilitating copyright infringement. Depending on who makes the request, the court order could include barring online advertising networks and payment facilitators from doing business with the allegedly infringing website, barring search engines from linking to such sites, and requiring Internet Service Providers to block access to such sites. The bill would make unauthorized streaming of copyrighted content a crime, with a maximum penalty of five years in prison for ten such infringements within six months. The bill also gives immunity to Internet services that voluntarily take action against websites dedicated to infringement, while making liable for damages any copyright holder who knowingly misrepresents that a website is dedicated to infringement.

Proponents of the bill say it protects the intellectual property market and corresponding industry, jobs and revenue, and is necessary to bolster enforcement of copyright laws, especially against foreign websites. They cite examples such as Google’s $500 million settlement with the Department of Justice for its role in a scheme to target U.S. consumers with ads to illegally import prescription drugs from Canadian pharmacies.

Opponents say that it violates the 1st Amendment, is internet censorship, will cripple the Internet, and will threaten whistle-blowing and other free speech actions. Opponents have initiated a number of protest actions, including petition drives, boycotts of companies that support the legislation, and planned service blackouts by English Wikipedia and major Internet companies scheduled to coincide with the next Congressional hearing on the matter.

Some of the Organizations Supporting H.R.3261

Recording Industry Association of America
Motion Picture Association of America
National Music Publishers’ Association
Screen Actors Guild
Comcast
NBC Universal
Viacom
U. S. Chamber of Commerce
Ford Motor Company
Universal Music Group Inc.
Pfizer
Walmart
News Corporation
CBS Corporation
Nike, Inc.
Time Warner
Disney
Visa

Some of the Organizations Opposing H.R.3261

Google
Yahoo
Twitter
Facebook
Wikipedia
AOL
Grooveshark
Go Daddy
Reddit
eBay
Microsoft
LinkedIn

The Patent Office backlog has been a problematic issue in the patent prosecution process.  It typically takes 25.7 months before an Examiner sends a First Action.  At its worst, the Patent Office had a backlog of more than 764,000 applications.

The recent patent law reform (America Invents Act) hopes to reduce this backlog by increasing fees and allocating funding in an effective manner in increase efficiency.  For example, three satellite offices will be opened by September 16, 2014.

In the meanwhile, new applicants have the option of expediting prosecution on new applications for a fee.  Under the Track I Prioritized Patent Examination Program, a patent applicant can pay a $4,800 fee to process their application to completion within 12-months of entering the program.  For small entities, the fee is $2400.  For a micro-entity, the fee would be $1200, although the Patent Office must first use the authority given in the America Invents Act to set these micro-entity fees.  Typically, after a petition has been granted, a First Action is received in about 1 month (as opposed to the 25.7 months mentioned earlier).

The process is considered complete in 12-month period when a Final Office Action is received.  If the Final Office Action rejects the application, the Applicant may continue pursuing the patent by filing a Request for Continued Examination, or RCE.