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.
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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 Power of Brands and Balancing the Rights of Trademark Owners with Society’s Interest in Free Expression with Janet Marvel
Saison 1 · Épisode 14
mardi 14 mars 2023 • Durée 56:01
For trademark owners, increasing brand recognition can sometimes be a mixed blessing. Well-known marks can start to be more than just strong source identifiers. They can be the targets of parody, criticism, social commentary, and other uses that go beyond the consumer goodwill attached to a mark. Concerns about free expression and free speech start to enter the equation. Featured guest Janet Marvel helps unpack the interplay between recognizing trademark rights while protecting expression that falls within the purview of the First Amendment. She’s a talented and experienced trademark practitioner, instructor, and author. We are fortunate to have her share her knowledge and insights on this area of trademark law.
In this episode, Jeff Harty and Janet Marvel discuss:
Brand essence and the power of brands.
Developing a good brand strategy.
Counterfeiting and e-commerce.
The balance between free speech and trademark protection.
Key Takeaways:
Trademarks provide valuable functions for both consumers and sellers of goods and services.
You have to think about a global stage for your major business operations and trademark strategy, not just your local country.
The U.S. Ninth Circuit Court has gone from artistic work to expressive work in its interpretation of the Rogers case. It is possible that they have expanded their view of First Amendment protection too far. We look forward to the Supreme Court soon providing guidance in the Jack Daniels case.
“Protecting your trademarks, in that respect of thinking about stopping counterfeiters, is important. You can’t stop a counterfeiter under the federal statute without a registration. So you want to have a registration, and you want to think about where you’re manufacturing.” —Janet Marvel
A Diverse Trailblazer’s Patent Strategies for Canada with Selena Kim
Saison 1 · Épisode 13
mardi 21 février 2023 • Durée 53:29
North America as a whole is a leader in the innovation system. In large part, that’s due to the relationship between the United States and Canada. That raises these questions: How do we go about protecting intellectual property rights in Canada? What are effective strategies? We answer these questions and talk in-depth about diversity in the legal industry with today’s guest Selena Kim.
In this episode, Jeff Harty and Selena Kim discuss:
Making great relationships with lawyers around the world.
Handling multiple areas of law (and having them work together).
The power of women in the innovation economy.
Differences in U.S. and Canadian patent law.
Key Takeaways:
Being a litigator offers insight into the small comments in a patent that you may not otherwise recognize can get you in trouble later.
If you are already filing in the United States, filing in Canada is not going to add much to the cost. With the North American market being as it is, filing in Canada as well may be the right choice for your patent.
When you are going through litigation in both the United States and Canada, the cases can assist one another. Depending on the case, it may be beneficial to start with one before the other.
While diversity in law firms in Canada has progressed, it is a slow progression. Firms can do more to bring their firms to resemble the diversity balance of their local population.
"You really need to think about your own personality and what will make you fulfilled in your career and your life and what kind of environment you are working in. And shape your practice that way to try to be as happy as you can now, rather than striving toward something that’s vague and ill-defined." —Selena Kim
Unlocking the Potential for All Americans to Participate in the Innovation Ecosystem with Valencia Martin Wallace
Saison 1 · Épisode 12
mardi 7 février 2023 • Durée 38:56
In this episode, Valencia Martin Wallace and I do a critical examination of our innovation ecosystem and how we can make it more diverse and inclusive. Valencia is the Deputy Commissioner for Patents for the U.S. Patent and Trademark Office (USPTO) and is the executive lead for the USPTO’s Council for Inclusive Innovation (CI2). Valencia shares data regarding how women and minorities are underrepresented in the innovation ecosystem. You can feel her passion for the topic and for strengthening the innovation and IP community as a whole.
In this episode, Jeff Harty and Valencia Martin Wallace discuss:
Valencia’s passion for growth and support in the IP community.
The creation of CI2 and why it is necessary.
The benefits of having a more diverse innovation ecosystem.
Strategies and initiatives to build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.
Key Takeaways:
While 30 percent of engineers and scientists who are working professionally are women, less than 12 percent have their names on patents.
The story does not end when an invention is patented—it takes a community to take the patented invention further into commercialization and usage.
By closing the gender gap, $12–$28 trillion can be added to the global economy.
Innovators are not created; they are born. It is a matter of helping those innovators get a rich education and giving them opportunities to help not only themselves, but also the nation.
“It takes a community to move forward in every field but especially when integrating technology and law.” — Valencia Martin Wallace
About Valencia Martin Wallace:
As deputy commissioner for patents, Valencia manages and leads the USPTO’s efforts related to international IP harmonization and provides executive oversight over patent-examining functions in the technologies of communication, mechanical engineering, manufacturing, and medical devices and processes. She provides executive leadership on international patent legal issues and various work-sharing efforts with international partners.
Protecting IP in the Workplace with Frank Harty
Saison 1 · Épisode 11
mardi 17 janvier 2023 • Durée 40:17
The intersection between intellectual property and employment law comes up very frequently. No doubt there are challenges in protecting a company’s IP in the workplace environment. A company may find itself in situations that vary from case to case. In this episode, we explore key concepts that can help businesses, both large and small, put themselves in better positions to protect their IP.
In this episode, Jeff Harty and Frank Harty discuss:
What to do with employees who leave your company and have acquired confidential information and trade secrets belonging to the company.
The importance of planning to secure and protect your rights.
Employment agreements and doing more than simply having the individual sign an agreement.
Using and enforcing noncompete agreements.
The Federal Trade Commission’s proposed new rule that would ban employers from imposing noncompetes on their workers.
Key Takeaways:
Planning is everything. Right from the beginning, think about what you want to protect and from whom.
The common law duty of loyalty (as recognized by most states) ends when the employee is no longer employed by the company. It is important to have post-employment restrictions or obligations written into the employment agreement.
When enforcinging noncompete agreements, the employer’s counsel should have a nimble plan of attack to protect the employer’s confidential information and other IP. Such matters often do not go to trial but culminate in an early motion for injunctive relief with a ruling from the court on whether to enter an injunction.
Be careful and clear in addressing the ownership and use of intellectual property with employees, independent contractors, and vendors.
“The common law duty of loyalty essentially ends the day the employee walks out of the workplace. Therefore, post-employment conduct generally has to be protected using agreements and in all the intellectual property protections that you put in place.” —Frank Harty
IP Strategies to Protect Your Organization’s Brands and Innovations with Leo White
Saison 1 · Épisode 10
mardi 3 janvier 2023 • Durée 54:33
When we talk about intellectual property, rarely is it a one-size-fits-all approach. Often, overlapping forms of intellectual property protect particular innovations, new products, etc. There is no substitute for being careful and deliberate. It requires thinking through a strategy that keeps your eyes on the prize in terms of how a particular form of IP or strategy might benefit the business. That strategy must also be consistent with the goals of your client. To talk about this and much more, we have Leo White, who serves as chief IP & associate general counsel, assistant corporate secretary for The Duracell Company.
In this episode, Jeff Harty and Leo White discuss:
Approaching IP from a strategic perspective with the business’ goals and plans in mind.
The bundle of IP tools for protecting your invention, product, and other property.
The power of a brand for the company and consumers.
Handling gray market and counterfeit goods.
Key Takeaways:
Make certain you are receiving the right advice for the situation at hand.
Look strategically at the situation to know which of the many IP tools is best and most appropriate for the endeavor.
A brand at the center of your business makes its way into almost everything you do.
Combating and counteracting counterfeiting activity can be difficult depending on where in the world it happens; however, counterfeit products hurt not only the company but also consumers.
“Patent maintenance fees cost a lot of money. You need to know what's going on from a count perspective to make sure those are the right decisions to address your portfolio, whether it's the maintenance of your current portfolio or what you're doing in the future.” —Leo White
Resources Provided by Your Regional USPTO with Damian Porcari
Saison 1 · Épisode 9
mardi 13 décembre 2022 • Durée 29:10
In this conversation, Jeff Harty speaks with Damian Porcari, regional director of the Elijah J. McCoy Midwest Regional United States Patent and Trademark Office. Damian explains how the regional offices work and tells us about the many resources available to aspiring inventors and business owners.
In this episode, Jeff Harty and Damian Porcari discuss:
Damian’s background in chemistry and his professional career, both of which helped form his views on intellectual property.
Measuring impact qualitatively.
Virtual hiring, training, and practice with the regional USPTO.
USPTO resources for aspiring inventors and business owners.
Key Takeaways:
Working at the USPTO has allowed Damian to work with smaller businesses that succeed and can compete with international conglomerates.
Counting things for the sake of counting things is not a true reflection of the impact of anything.
Attorneys and judges are assigned to cases based on their own technical backgrounds, even if they are in different regions.
Integrate the IP needs assessment into your business plan. Reassess it every year; your needs will grow and change as your business grows and changes.
“The people that utilize the needs assessment, that actually go and answer all 60 questions thoughtfully, and then bring it to their advisers, whether they’re lawyers or investors or partners, can essentially integrate those questions into their business plans.” —Damian Porcari
About Damian Porcari:
Damian Porcari has been the regional director of the Elijah J. McCoy Midwest Regional United States Patent and Trademark Office (USPTO) since September 2018. From 1989 to 2017, Damian worked for Ford Global Technologies LLC (FGTL) in Dearborn, Michigan, serving as its director of licensing and enforcement from 2005 to 2017. Damian is a named inventor on six U.S. patents and created one of the largest IP software companies in the world. He received a bachelor of science in chemistry from Michigan State University and a juris doctor from the University of Detroit Mercy School of Law.
The Role of IP Systems in Maintaining a Strong Innovation Economy with David Kappos
Saison 1 · Épisode 8
mardi 29 novembre 2022 • Durée 44:04
Our featured guest is one of the most respected and influential voices in intellectual property, particularly as it relates to innovation and patent policy. David Kappos has had a distinguished career steeped in leadership roles and IP. In this episode, he talks about how IP inspires him, the intersection of IP and government, the importance of maintaining strong IP systems in the United States, and the complicated topic of patent-eligible subject matter.
In this episode, Jeff Harty and David Kappos discuss:
How IP continues to motivate and inspire David in his career.
How a strong patent system drives important investments in new technologies.
Threats to intellectual property in the United States.
Patent-eligible subject matter.
Key Takeaways:
IP is a key to solving all of the world’s most daunting problems.
Consumers must be prepared to pay higher prices in the short term for new and innovative products protected by patents. However, it’s a long-term game, not about what is happening now.
The Council for Innovation Promotion is helping to provide transparency and visibility into what those in Washington, D.C., are doing for and against intellectual property and the patent system.
The law of subject matter eligibility for patents is confusing and unclear. Innovation tends to lag in the technology areas most affected, hurting U.S. companies and innovators.
"If we, the U.S., want to continue to lead the world in opportunity, and if we, the world, want to improve our condition for humans and the planet more generally, we have to have a strong and effective IP system." —David Kappos
About David Kappos:
David J. Kappos is widely recognized as one of the world’s foremost leaders in the field of intellectual property, including intellectual property management and strategy, the development of global intellectual property norms, laws, and practices, as well as the commercialization and enforcement of innovation‑based assets. A partner at Cravath, Swaine & Moore LLP, David handles complex intellectual property issues, including those pertaining to the blockchain, crypto assets, and fintech, as well as data security and privacy. From August 2009 to January 2013, he served as Under Secretary of Commerce and director of the United States Patent and Trademark Office (USPTO). Among his numerous awards, David was named one of the Top 25 Icons of IP by Outstanding Practitioner of the Year in IP
A Strategic and Collaborative Approach to Navigating IP Matters with Carlo Cotrone
Saison 1 · Épisode 7
mardi 15 novembre 2022 • Durée 46:01
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
Pattishall partner Janet Marvel protects brands, copyrighted works, and domain names throughout the world. She has been charged with protecting the trademarks of world-famous brands, such as Ford, Pepsi, Harlequin (romance novels), and Mattel. She even protects the famous Cheesehead hat on view during the NFL season when the Green Bay Packers play.
As part of her practice, Janet represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, rights of publicity, breach of contract, unfair competition, and false advertising. She has successfully tried cases and litigated around the country in state and federal courts and before the U.S. Patent and Trademark Office. In a notable case, she successfully defended a small company’s ownership of the Brawny mark for plastic bags against an all-out attack in two federal courts and the Trademark Trial and Appeal Board. She also developed expert testimony for the Internal Revenue Service in a $262 million case involving evaluation of assets of the Carnation Company. She handled the acquisition of the famous CURAD mark.
When she is not working, you will probably find Janet hiking—often north of the Arctic Circle. Janet’s travel has included backpacking trips to Canada’s Ellesmere Island (at 80 degrees north latitude, accessible just three weeks a year), Gates of the Arctic National Park, and the Arctic National Wildlife Refuge.
Selena Kim is a partner in Gowling WLG’s Toronto office, practicing in intellectual property litigation, patent prosecution, transactional intellectual property work, and strategic intellectual property portfolio management. In 2020, Canadian Lawyer named her one of the Top 25 Most Influential Lawyers in Canada.
Selena has been certified by the Law Society of Upper Canada as a specialist in intellectual property (patent, trademark, and copyright) and is the first woman to achieve this designation for patents in the Law Society’s history. Selena’s litigation experience includes work before all levels of court in Canada, involving patents for complex mechanical, electronic, and chemical inventions. She also conducts patent and design agency work before the Canadian Intellectual Property Office.
Selena has a technical background, with a graduate degree in molecular biology and having conducted laboratory research in genetics, gene expression, and pharmacology. She is a registered patent agent before both the CIPO and the U.S. Patent and Trademark Office.
Selena is an active member of professional associations, including the National Asian Pacific American Bar Association and the American Bar Association. She is a contributing member of committees reviewing patent legislation and legal developments. She also serves as chair of Autism in Mind, a local nonprofit organization.
Valencia is the executive lead for the USPTO’s Council for Inclusive Innovation (CI2). The CI2 will help guide the USPTO in developing a comprehensive national strategy to build a more diverse and inclusive innovation ecosystem.
As deputy commissioner for patent quality, Valencia was responsible for sustaining the quality of the patent examination processes and products. In her 28-year career at the USPTO, she also oversaw software technology centers, served as executive co-lead on the implementation of the AIA First-Inventor-to-File statutory framework, and led the implementation of the Office of Patent Examination Support Services.
Valencia earned a bachelor of science in electrical engineering from Howard University and a juris doctorate from The George Washington University School of Law. She also has a certificate in Advanced Public Administration from Syracuse University’s Maxwell School of Public Administration.
Frank Harty put himself through college and law school by playing football and working.
A commitment to professionalism and blue-collar roots—he’s from a family of cops and firefighters—sparked his interest in workplace issues and his specialty in labor and employment litigation. “Next to faith and family, the workplace is the most important part of most lives,” he says.
Frank has tried almost 100 cases to verdict. He regularly represents companies, nonprofit organizations, and institutions of higher learning in day-to-day and complex labor and employment issues.
Employers with litigation or other labor and employment needs can rely on his experience, knowledge, and persistence. Frank is equipped to address a broad range of labor and employment issues. “I’m primarily a trial lawyer who focuses on labor and employment, but I also have an office practice and provide preventive advice that relates to the workplace,” he says.
His passionate desire to win shows in his record of success and his recognition by leading guides such as Chambers USA and Benchmark Litigation. “I like finding ways to win for my clients.” Frank says, “and that might include winning by losing the right way. It might include winning by avoiding a fight. Very often, it includes going to trial and winning at trial.”
“FTC Proposes Sweeping Ban on Noncompetes: What Employers Need to Know Now”
Nyemaster attorneys Brianna Long and Randall Armentrout take a look at the key issues employers need to know regarding the Federal Trade Commission’s recently proposed ban on noncompete agreements:
Leo White serves as chief IP & associate general counsel, assistant corporate secretary for The Duracell Company. He oversees intellectual property and litigation matters and is also responsible for various corporate, advertising, and transactional matters.
Previously, Leo worked within the legal department of Procter & Gamble as a patent attorney. He has also held various roles within the research and development organizations of Procter & Gamble, as well as Gillette.
Leo earned B.S. and M.S. degrees in chemical engineering from Worcester Polytechnic Institute and a J.D. from Quinnipiac University.
Transactions by Managing IP, one of the 100 Most Influential Lawyers in America by The National Law Journal, and was inducted into the Intellectual Property Hall of Fame by
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.
