In today’s episode, Jeff Harty and Fran Haas explore the complexities of noncompete agreements, noting their effectiveness in protecting IP but also their challenges. Fran highlights varying state laws on noncompetes and provides valuable insights related to structuring noncompete agreements with remote and mobile workforces.

In this episode, Jeff Harty and Fran Haas discuss:

• Noncompete agreements to protect IP and what makes them enforceable.
• How non-solicitation agreements and confidentiality agreements differ from noncompete agreements.
• Political pressure against noncompete agreements.
• State-specific limitations to be aware of.

Key Takeaways:

• What the noncompete agreement says, the law that applies, and where your employee is living or working are all variables that can greatly impact the enforceability of a noncompete.
• Noncompetes are politically unpopular because they are viewed as giving an employer the ability to stop someone from earning a living.
• Be strategic about your chosen state. Be aware of the laws in the state where your business is organized.

“Make sure your noncompete is enforceable in your chosen state. That’s a first step. It seems obvious, but with the law changing as much as it is, you should be checking in at least once a year with your employment counsel to make sure your noncompetes are still enforceable.” — Fran Haas

About Fran Haas: In her labor and employment practice, Fran Haas encounters a fair share of difficult cases, but in each matter, she’s determined to reach a conclusion that satisfies her clients. “I’m able to handle all the issues my clients might encounter,” she says. “It’s about being resourceful.”

Fran litigates for employers in cases related to harassment, discrimination, retaliation, Family and Medical Leave Act, equal pay, and wrongful termination. She negotiates collective bargaining agreements on behalf of management, as well as other labor disputes. She also takes on higher education cases in matters involving Title IX, Title VII, the Violence Against Women Act, and the Iowa Civil Rights Act.

On a daily basis, Fran takes satisfaction in seeing the legal system at work. As a former law clerk for a federal judge, Fran saw firsthand how the court provides an important service to citizens, something that drives her in her practice. “It’s very rewarding to me when the system works the way it should and we get the outcome for the client,” she says. “It’s not just winning but being part of a process that works.”

Connect with Fran Haas:

Website: nyemaster.com/team/frances-m-haas

Email: fhaas@nyemaster.com

LinkedIn: linkedin.com/in/frances-haas-47a42819

Connect with Jeff Harty:

Website: nyemaster.com/attorney-directory/jeffrey-d-harty

Email: jharty@nyemaster.com

LinkedIn: linkedin.com/in/jeff-harty-5a9a1643

Jeff Harty discusses the evolution of China’s patent system with Stephen Yang. The conversation highlights the shift from foreign to Chinese patent filings, now at more than 3 million annually, with 1.6 million invention patent filings in 2023.

In this episode, Jeff Harty and Stephen Yang discuss:

• Patent filing trends in China
• Types of patent protection
• Government innovation policies
• Patent enforcement mechanisms and strategy

Key Takeaways:

• China’s patent system has dramatically transformed, with Chinese applicants now dominating patent filings. In 2023, more than 1.6 million invention patent applications were filed, with 1.5 million from Chinese applicants.
• China offers a unique utility model patent system. It provides a faster, cheaper alternative to invention patents with a lower inventive step threshold. These patents can be granted in about six months and can provide strategic advantages for certain types of subject matter.
• The Chinese government has actively driven patent innovation through national IP strategies, government subsidies, and incentives. This led to some unintended consequences like “abnormal applications” that are now being addressed.
• Patent enforcement in China follows a dual-track system with administrative and judicial routes. Foreign patent holders can expect a relatively neutral judicial environment, with nearly 99 percent of prevailing patent holders receiving injunctive relief and increasingly higher damage awards.

“Right now, the whole atmosphere in China is pro patentee, pro rights holder. Doesn’t matter if it’s domestic or foreign.” —Stephen Yang

About Stephen Yang: Stephen Yang is a patent attorney and managing partner of IP March. He began to practice IP law in 1997. Educated in both China and Canada, Stephen worked in private practice in China and as in-house counsel in Canada. He has gained a unique perspective in providing legal services to clients.

Connect with Stephen Yang:

Website: https://www.ipmarch.cn/en/

LinkedIn: https://www.linkedin.com/in/stephen-yang-a243303/

Connect with Jeff Harty:

Website: nyemaster.com/attorney-directory/jeffrey-d-harty

Email: jharty@nyemaster.com

LinkedIn: linkedin.com/in/jeff-harty-5a9a1643

In this episode, Jeff Harty and Stephen Kunin discuss:

• The RESTORE Act and injunctive relief in patent cases
• Reforming patent subject matter eligibility through PERA
• The current landscape of innovation protection
• How patent protection in the United States stacks up with other countries

Key Takeaways:

• The RESTORE Act aims to modify injunctive relief by creating a rebuttable presumption that shifts the burden of proof to accused infringers, potentially making it easier for patent owners to obtain injunctions after proving infringement.
• PERA (Patent Eligibility Restoration Act) seeks to provide greater clarity in patent subject matter eligibility by eliminating judge-made exclusions and specifically defining what cannot be patented.
• The current U.S. patent landscape is seen as less innovation friendly compared to other key countries, with the United States applying stricter standards for patent eligibility, especially in areas such as software, computer technologies, and life sciences.
• Both the RESTORE Act and PERA are attempts to address perceived weaknesses in the U.S. patent system, with the goal of making patent protection more predictable and supportive of innovation, particularly for non-practicing entities such as universities and independent inventors.

“Post-eBay, essentially, there is no presumption [regarding] injunctive relief. In fact, you had to apply the four-factor test that’s applied for temporary restraining orders and preliminary injunctions to attain such relief.” —Stephen Kunin

Connect with Stephen Kunin:

Website: https://maierandmaier.com/staff/stephen-kunin/

If you missed it, check out our first episode with Jay Kesan: The PTAB And The Impact Of Post-Issuance Invalidity Proceedings With Jay Kesan

Connect with Jeff Harty:

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

Our guests are so generous with their time. They allow us to have terrific conversations about this world of intellectual property, their roles, and strategies for effectively dealing with IP. That’s certainly the case with our featured guest today. Carlo Cotrone wears a lot of hats in the field of intellectual property. As chief IP counsel for Techtronic Industries, he manages innovation for the company’s well-known brands, such as Ryobi, Milwaukee, Hoover, Oreck, and Dirt Devil. In this episode, he shares his thoughts on the importance of strategy and collaboration as enterprises navigate the world of IP.

In this episode, Jeff Harty and Carlo Cotrone discuss:

• What about IP inspires and drives Carlo in his life and career.
• The breadth of IP issues that Carlo deals with as in-house IP counsel.
• Why strategy and collaboration are essential in IP.
• The mindset of collaboration locally and globally.
• Counterfeiting in the world of e-commerce.

Key Takeaways:

• Strategy is about outside-the-box thinking and moving beyond the tactical to find complementary ways that may not come to mind immediately without intentionally taking a different view.
• Knowing the client’s business and looking at IP from a business perspective is an excellent approach for both in-house and outside counsel.
• Collaboration comes down to human-to-human and human-to-group communication and relationships.
• It’s important to find partners with whom you can build relationships and who understand the risk profiles of the company.

“It’s really important to develop meaningful metrics internally, especially those that help hold the IP teams, and the company at large, to a rationality to the investments being made in IP and the result.” —Carlo Cotrone

About Carlo Cotrone:

Carlo Cotrone is chief IP counsel at Techtronic Industries North America (TTI), a world leader in cordless technology spanning power tools, outdoor power equipment, and floor care appliances. He also is adjunct professor of law at University of Houston Law Center. He is a frequent speaker and author on topics such as IP strategy and asset management, legal ethics, collaboration and innovation strategies for law firms and corporate legal departments, and professional development. Previously, Carlo served as senior IP counsel at General Electric and at energy technology company Baker Hughes. He practiced law at firms on the East Coast and in the Midwest, most recently as a partner. He holds two U.S. patents as the inventor of technology directed to digital sheet music.

Connect with Carlo Cotrone:

Website: https://ipwatchdog.com/people/carlo-cotrone-2/

Twitter: https://twitter.com/cmcotrone

LinkedIn: https://www.linkedin.com/in/carlo-cotrone-8266752/

Connect with Jeff Harty:

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

In this conversation, Kirk Goodwin, head of global innovation IP at Whirlpool Corporation, shares his insights for ways to drive innovation and get the most out of your IP assets. For most companies, continuing to innovate isn’t just an option. It’s not enough to simply keep pace; you need to stay ahead of the game if you truly want to thrive and be relevant. That’s why driving innovation and maximizing the return on your investments in intellectual property are more important today than ever.

In this episode, Jeff Harty and Kirk Goodwin discuss:

• Driving innovation within an organization.
• Maximizing returns on investments in intellectual property.
• How to know where to innovate.
• Measuring your ROIP (Return on Intellectual Property)—beyond the number of submissions and number of patents.

Key Takeaways:

• Your goal shouldn’t be to simply get patents. Your goal should be to get innovation that you can protect—your intellectual property.
• You grow innovation by protecting intellectual property and then creating additional intellectual property and innovation around the assets you already have.
• We don’t need to incentivize people to innovate, but we do need to communicate where the value can be brought. Innovators want to innovate. Your job is to facilitate that.
• Teach your employees where to be innovative and how to share that innovation.

“IP is not the last step. It is the first step and the second step and the third step and so on. That’s how you continue to grow innovation, by creating those foundations that you protect with intellectual property.” — Kirk Goodwin

About Kirk Goodwin:

Kirk Goodwin is assistant general counsel, Global Innovation IP and Cybersecurity, for Whirlpool Corporation. Previously, Mr. Goodwin served as chief patent counsel, North America, and chief counsel for Global Information Systems for Whirlpool. Mr. Goodwin leads Whirlpool’s team of patent attorneys, agents, and paralegals in various patent functions, including IP clearance, acquisition, technology transactions, and litigation. Prior to joining Whirlpool, Mr. Goodwin was a senior patent attorney for Maytag Corporation, where he led offensive and defensive patent and trade secret litigation.

Connect with Kirk Goodwin:

LinkedIn: https://www.linkedin.com/in/kwgoodwin/

Twitter: @kirk_goodwin https://twitter.com/kirk_goodwin

Connect with Jeff Harty:

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

In our innovation economy, trademarks and trademark protection are likely to play a significant role in an intellectual property strategy. We know companies spend lots of time and money investing in brands as they compete for consumer attention and recognition. We also know that surveys play an important role in trademark and unfair competition cases. In particular, that’s because so many inquiries are focused on the perceptions of the average, reasonably prudent consumer. How do we measure that? How do we assess that? It sets the stage for a potential consumer survey, which introduces both technical and strategic questions. Featured guest Mike Keyes is uniquely qualified to help us better understand the effective use of trademark surveys, both from an academic and a practical litigation perspective.

In this episode, Jeff Harty and Mike Keyes discuss: 

• The evolution of survey evidence in court cases. 
• Common ways surveys are used in trademark and advertising litigation. 
• The role lawyers and survey experts play in consumer surveys. 
• Why surveys are approachable subject matter and evidence for jurors (and how they can be looked upon unfavorably). 
• Hurdles to the admissibility of survey evidence. 

Key Takeaways: 

• The treatment of expert testimony under Federal Rules of Evidence 702 and 703 contributed to the growth of consumer surveys in litigation, and now it is not unusual for judges to expect to see surveys in Lanham Act cases. 
• When it comes to secondary meaning and likelihood of confusion, surveys can be beneficial and can be powerful and persuasive pieces of evidence. 
• Different types of trademark survey designs can be used depending on what litigators are trying to show, such as genericism, acquired distinctiveness, or likelihood of confusion. 
• There's both art and science to putting together a survey questionnaire that’s clear, concise, and not leading or biasing survey respondents. 

“Survey evidence doesn’t show actual confusion—what it’s trying to test for. It’s a tool to assess how consumers’ perceptions are in the real-world marketplace. And because it’s really trying to get at that issue, it’s important to replicate marketplace conditions in terms of how consumers encounter the marks at issue during the survey process.” —Mike Keyes

About Mike Keyes: 

Mike Keyes is the co-head of Dorsey’s trial group and a go-to intellectual property and commercial litigation trial attorney with a vast reservoir of experience in cases involving trademarks, copyrights, and false advertising, including individual consumer and class action claims. Mike and his team have represented some of the world’s most recognized brands and companies in high-stakes litigation in federal courts across the country including Washington, Oregon, California, Colorado, Minnesota, Illinois, New York, Massachusetts, Utah, and Florida. These disputes have encompassed subject matters including medical diagnostics software, online games and apps, Google Ads, social media, e-books, consumer products, food and beverage, fashion, sports equipment, educational testing tools, and hospitality services. 

Connect with Mike Keyes: 

Website: https://www.dorsey.com/ 

LinkedIn: https://www.linkedin.com/in/mike-keyes-7b6a134/ 

Email: keyes.mike@dorsey.com 

Connect with Jeff Harty: 

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/