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Intellectual Property Report

Client Updates

For Good Reason: “Reasonable Measures” in Recent Trade Secret Law

Amy Bergeron
One often-overlooked requirement has the potential to make or break a trade secret misappropriation claim: the trade secret owner must have taken “reasonable measures” to protect the trade secret; otherwise the information does not qualify as trade secret under the Federal Defend Trade Secrets Act (“DTSA”) or the Uniform Trade Secrets Act (“UTSA”). But the statute does not provide what protective measures are sufficiently reasonable, so that determination largely depends on each case’s facts and circumstances. This article examines recent case law surrounding what measures courts have found to be “reasonable” under the circumstances (and which ones courts have found were not “reasonable” under the circumstances).
To read the full article, click here.

Strategic Considerations in Litigating FRAND Royalty Rates for Standard Essential Patents
Amara Osisioma
Many strategic considerations influence negotiations to license patents that protect the intellectual property incorporated in technical standards. This article analyzes some of these factors and how they should impact a party’s evaluation of how to conduct negotiations for a royalty rate for patents that cover technical standards, and when to cease negotiations and initiate litigation.
To read the full article, click here.

Baker Botts Webinar: The U.S. Supreme Court's Impact on IP
July 1, 2021
The Supreme Court Term coming to an end in June has been another busy year for developments in intellectual property law. All told, the Supreme Court took up three IP cases this Term addressing several important issues, including copyright’s fair use doctrine, the constitutionality of PTAB judges, and the applicability of the doctrine of assignor estoppel.
With the current Term nearing its conclusion, our panel including former Supreme Court and Federal Circuit clerks and in-house counsel will take a hard look at Supreme Court IP decisions. We will also examine other IP cases to watch in 2021, and the current composition of the Court.
To register for this Webinar, click here.

Protecting Your Hydrogen Investment: Intellectual Property Issues
Thomas B. Carter Jr., Elizabeth FlanneryNatalie Gonzales
The past 18 months have seen an explosion of interest in hydrogen, with investors scrambling to invest in this burgeoning industry sector and valuations for hydrogen-related companies multiplying rapidly. As interest and investment in the hydrogen market grows, companies will look to protect their investment in emerging hydrogen technology. Intellectual property laws provide a variety of ways to monetize innovations while preventing competitors from freely benefiting from research and development efforts. For example, a company may file for patents that provide a twenty-year monopoly in most countries in exchange for public disclosure of a new invention. Alternatively, a company might decide to keep its innovation as a trade secret that may be protected indefinitely from theft but not independent creation by others.
To read the full article, click here.
*This article was featured in this month's Hydrogen Economist newsletter.

A Practical Metric For Annual Patent Filing Targets: Part 1 & Part 2
Dr. Michael SartoriMatt Welch
How many patent applications should we file this year? This question is contemplated annually by many intellectual property departments. The answer affects which of the company's goods or services will have patent protection, which future product lines will be patent-covered, how large of a patent moat can be built, and, perhaps most importantly, the valuation of the company.
To read Part 1, click here. To read Part 2, click here.
*These articles were previously published in Law360 on May 20, 2021 and June 21, 2021.

Central Bank-Backed Crypto Requires Regulatory Framework
Ali Dhanani
The Bahamas and Cambodia have rolled out their own central bank-backed digital currencies, or CBDCs. China is already testing its CBDC, the digital yuan, which it hopes to roll out nationally. Meanwhile, Sweden and Indonesia have announced plans to launch CBDCs.
Not to be left out, the U.S. is also studying the feasibility of launching its own digital currency. Recently, the U.S. Senate Committee on Banking, Housing and Urban Affairs held a hearing on the topic of CBDCs.
Such digital currencies are backed by a government and are not decentralized, which is essentially the opposite of the defining features of blockchain-based cryptocurrencies like Bitcoin.
To read the full article, click here.
*This article was previously published in Law360 on June 24, 2021.

European Commission Adopts Updated Standard Contractual Clauses and Mandates New Compliance Deadlines
Matthew BakerSamir BhavsarNeil Coulson
The European Commission (“the Commission”) finalized its implementing decision adopting two sets of newly updated Standard Contractual Clauses (“Updated SCCs”). One set concerns data transfer between intra-EU controllers and processors and the second set concerns data transfers between the EU and third countries. Following the invalidation of the EU-US Privacy Shield, the Updated SCCs provide much needed predictability.
To read the full article, click here.

2021 Intellectual Property Practice Legal 500 Rankings
Our Intellectual Property lawyers and professionals have a deep commitment to exceptional client service. We are pleased to announce that the hard work and successes, on behalf of our clients, have been well recognized in Legal 500 this year. With sincere appreciation, we want to thank you for supporting our lawyers and trusting the Baker Botts team with your legal matters.
The Baker Botts IP practice was recognized in several Legal 500 categories: Patent Litigation, ITC, Patent Licensing, Patent Prosecution (including PTAB), and Trade Secrets. Our individual rankings included Hogene Choi (Leading Lawyer, Patent Prosecution), Lisa Kattan (Leading Lawyer, ITC), and Katharine Burke (Next Generation Partner, Trade Secrets). To view Baker Botts' full list of rankings in Legal 500, click here.

Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit