We live in very innovative times where intellectual property rights - patents, trademarks, copyrights, and trade secrets - are a key component to the future success of almost any career or business.
Join Jeff Harty biweekly as he interviews patent and trademark professors, in house IP counsel, business leaders, IP trial attorneys and even members of the judiciary who will provide unique perspectives on what it takes to develop a successful strategy in dealing with intellectual property. Whether you are interested in intellectual property protection, enforcing IP rights or defending IP disputes, this is the podcast for you.
Site
RSS
Apple
Données mises à jour le 14/07/2026
Classements récents
Dernières positions dans les classements Apple Podcasts et Spotify.
Liens partagés entre épisodes et podcasts
Liens présents dans les descriptions d'épisodes et autres podcasts les utilisant également.
Découvrez des podcasts liées à On Intellectual Property. Explorez des podcasts avec des thèmes, sujets, et formats similaires. Ces similarités sont calculées grâce à des données tangibles, pas d'extrapolations !
Challenges in Navigating Noncompete Agreements and Protecting IP in the Workplace with Fran Haas
Saison 2 · Épisode 7
mardi 27 mai 2025 • Durée 43:06
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.”
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.
The Importance and Future of the USPTO with Drew Hirshfeld
Saison 2 · Épisode 5
mercredi 9 avril 2025 • Durée 34:04
Today, Jeff Harty and Drew Hirshfeld talk about the potential impact of the DOGE advisory board on the U.S. Patent and Trademark Office. Their conversation covers how the office is funded and how the USPTO maintains productivity and handles the large backlog of patent applications. They also discuss the impact of the return-to-office executive order and the importance of hiring the best talent as patent examiners, wherever they’re based.
In this episode, Jeff Harty and Drew Hirshfeld discuss:
The impact of the DOGE advisory board on the USPTO.
Advantages of having a clear prosecution record in patent cases.
How the hiring freeze and the return-to-office executive order affect those at the USPTO.
Extensive productivity reports for USPTO examiners.
The crossroads facing the USPTO.
Key Takeaways:
Those with senior roles at the USPTO often have two main goals: to improve the quality of work and to improve pendency—getting results of patent decisions to the applicants faster.
If an examiner is clear as to why they are making decisions and an applicant can see what the examiner is doing, it is easier to understand what is happening. When it is not clear, the examiner and applicant can talk past each other, and that is where discrepancies will happen.
Allowing for telework and work from home allows the USPTO to recruit top talent from around the country, not just in the immediate area of the office.
The USPTO is unique in that it is entirely funded by user fees, not federal tax dollars.
“I think that the USPTO’s best quality initiative is its telework program, its ability for people to work at home, because you’re able to choose people from a pool that’s across the country now, as opposed to just in the Alexandria, Virginia, area.” —Drew Hirshfeld
Stephen Kunin: Restoring Patent Rights: Innovation, Legislation, and the Future of IP Protection
Saison 2 · Épisode 4
mardi 25 mars 2025 • Durée 39:59
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
Classic Rewind: A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone
Saison 2 · Épisode 3
jeudi 25 avril 2024 • Durée 46:21
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
Classic Rewind: Driving Innovation and Maximizing Your Return on Investment in Intellectual Property with Kirk Goodwin
Saison 2 · Épisode 2
jeudi 11 avril 2024 • Durée 36:56
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:
The State of the Patent Ecosystem: Live at IIPLA with Judge Randall Rader and Jay Kesan
Saison 2 · Épisode 1
mardi 28 novembre 2023 • Durée 51:25
Welcome to Season 2 of the On Intellectual Property Podcast! We welcome Judge Randall Rader and welcome back Jay Kesan for a conversation on all things patent.
In this episode, Jeff Harty, Judge Randall Rader, and IP attorney and law professor Jay Kesan discuss:
AIA, the PTAB, and PTAB Reform (the Prevail Act)
Global patent trends and what it means for the U.S. innovation economy
Apportionment in patent damages
From E.D. of Texas to W.D. of Texas to Delaware: hot patent courts
Effective appellate advocacy
Key Takeaways:
Adequately protecting the technology of tomorrow requires looking beyond your own country’s law. We cannot simply look to U.S. intellectual property law but must consider the global interplay in patent law.
IP is about strategy. In a worldwide dispute, you want to be able to settle in the United States, even if you use leverage from other countries to give you the best strategy for your desired settlement.
It is about more than just the cash value. There is also cost value and market value to be considered in apportionment.
In appellate work, you are looking for a single, reversible error. You need to be able to discern the one error that should be corrected, why it is reversible, and then be clear and convincing on that point.
“I feel like putting a model or submitting a model forces me to submit, essentially, an embodiment and example. And I would hate to be limited to the example or the model that I submit. Part of the beauty of the claims system is that you’re drafting the claims to capture all those examples and models and so on. And I’d hate to be deprived of that by having a model submitted or basically lose that flexibility at the altar of definiteness or preciseness.” —Jay Kesan
Trademark Surveys: Why, When, and How to Use Them with Mike Keyes
Saison 1 · Épisode 17
mardi 30 mai 2023 • Durée 58:52
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.
A Strategic Approach to Patent Prosecution with Todd Van Thomme
Saison 1 · Épisode 16
mardi 9 mai 2023 • Durée 34:29
This is a particularly special episode for me because I’m joined by friend and colleague Todd Van Thomme. When you feel stuck in your work, you need a fresh idea or a new way to think about an issue. A colleague you can turn to for help, guidance, or a new way to frame the issue can lead you toward solving your problem. When it comes to protecting inventions, patent prosecution, and building strong portfolios, Todd is right at the top of my go-to list. I know from experience working with Todd that he always prosecutes patents with a strategy in mind and a purpose. That is what he is going to share with us.
In this episode, Jeff Harty and Todd Van Thomme discuss:
Todd’s unique journey to the intellectual property field.
The early stages of IP for preserving and maintaining the right.
Best practices for application success.
Taking a collaborative approach with the examiner.
Key Takeaways:
Listen as much as possible. It is crucial to understand the client’s business and goals.
When developing an IP portfolio, sometimes the failures help to define the better way to write the application or story. It helps to understand how the client reached that point and the possible scope of their invention.
Although conducting an examiner interview may cost a little more upfront in the IP application process, it very well may save considerable money later as it often speeds up the application and examination process.
There is value in tapping someone who primarily does patent litigation to get a different viewpoint on protecting inventions.
“If I had my choice, I’d conduct an interview in virtually every case. It fosters some of that collaborative interaction with the examiner. Most examiners, I think, are willing to have those kinds of conversations at virtually every stage.” —Todd Van Thomme
Effective Advocacy in Markman Claim Construction Proceedings with Michael Friedland
Saison 1 · Épisode 15
mardi 18 avril 2023 • Durée 50:02
We’re taking a critical look at one of the most important parts of a patent case: claim construction. Michael Friedland, co-chair of Knobbe Martens’ litigation practice group, is uniquely qualified to help us unpack claim construction, advocacy, and the importance of natural language—utilizing plain and ordinary meanings when urging proposed constructions of disputed claim language.
In this episode, Jeff Harty and Michael Friedland discuss:
The role of claim construction in a patent dispute.
Balancing the simplification of technology so a judge can understand it without simplifying to the point of inaccuracy.
Knowing your audience and changing your approach to the court.
The role of expert testimony in claim construction (and when not to use an expert).
Key Takeaways:
Keep it clear, keep it simple, and work together with the court to sort out any confusion regarding the relevant technology and to adopt the proper interpretation of the claim language.
Start giving claim construction serious thought when you first look into the case, even before it is filed.
A good brief can help somebody pick which claim construction to use and help them get it right.
The simpler claim construction is often the one that wins. An expert is someone outside your control and can cause confusion when it wasn’t necessary based on the record you already have.
“I want whatever we are doing to seem simple, natural, and not contrived.” —Michael Friedland
About Michael Friedland:
Mike has three decades of intellectual property enforcement experience and is the co-chair of Knobbe Martens’ litigation practice group. Since 2000, he has represented clients in more than 200 intellectual property cases in courts in California and 21 other states.
About Drew Hirshfeld: Hirshfeld was a long-tenured employee of the U. S. Patent and Trademark Office (USPTO) and was named one of Managing IP’s Top 50 Most Influential People in IP in 2021 (Managing IP is part of the Euromoney Institutional Investor PLC group). Hirshfeld began his career at the USPTO as a patent examiner in 1994 and has held a variety of senior management positions. He was named Commissioner for Patents in 2015 and performed the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO from January 2021 to April 2022. Most recently,Hirshfeld served as Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director.
Hirshfeld now brings his wealth of patent prosecution and litigation experience to Schwegman Lundberg & Woessner. His achievements included leading the USPTO’s response to the Supreme Court’s 2021 Arthrex decision by implementing a new process for director review of final written decisions from the USPTO’s Patent Trial and Appeal Board; serving on the USPTO’s Precedential Opinion Panel to decide issues of exceptional importance to the Patent Trial and Appeal Board; and overseeing extensive patent prosecution training for patent examiners and members of the public.
While performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Hirshfeld was responsible for more than 13,000 employees and an annual budget of more than $4 billion. He was also responsible for all USPTO functions related to the examination and issuance of all patents. In addition, he championed the USPTO’s mentoring program.
Outside of work, Hirshfeld and his wife have three daughters. He enjoys woodworking to make things for his family, including an acoustic guitar, kitchen cabinets, and furniture.
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.
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.
“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.
An inventor and entrepreneur, Todd Van Thomme's experience with his own start-up company helps him understand both the legal challenges and the day-to-day issues of running a business.
In his intellectual property practice, Todd partners with clients to identify and collaborate on mechanical, chemical, nutraceutical, pharmaceutical, and food science-related intellectual property needs. He drafts and prosecutes both utility and design patent applications. He also drafts patentability, non-infringement, and invalidity opinions, especially for patents and patent applications. He counsels clients on how to avoid IP disputes and works with clients to resolve them when they do occur. Todd also prepares, files, and prosecutes trademark applications.
His combination of legal and entrepreneurial experience brings unexpected benefits for clients. As a former secondment in-house counsel for Whirlpool Corp. and the inventor and owner of Giftzapz, a patent pending gift list-sharing app, Todd has gained a client’s perspective of a business.
As president of the Association of Intellectual Property Firms, Todd developed close personal relationships with thought leaders in the larger intellectual property legal community around the world. He uses those personal connections to aid clients in protecting their IP worldwide, taking a globally strategic view of patent and trademark prosecution.
Focused on patent, trademark, trade secret, and copyright matters, Mike’s cases have spanned a range of industries and technologies, including consumer products, semiconductors, tactical products, medical devices, computer software, apparel, restaurants, and financial services.
He has represented brand-name companies including Oakley, Luxottica, ITT, Makita, Pacific Life Insurance Company, Carl’s Jr., Microsemi, NASCAR, Daytona International Speedway, Game Show Network, Razor, Volcom, Specialized Bicycle, Mexicana Airlines, and SRS Labs.
Mike is the secretary of the Harvard Law School Association and a member of its executive committee. He is a co-founder and former president of the Harvard Law School Association of Orange County. He is a member of INTA’s Alternative Dispute Resolution Committee. Mike has taught as an adjunct professor at the Whittier School of Law and served as a JAG officer with the California State Military Reserve. He worked as a reserve deputy with the Orange County Sheriff’s Department for 16 years, retiring as a lieutenant.
