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Landslide Series: Integrating Trade Secret and Patent Strategies for Coordinated Protection: Pitfalls and Opportunities

Level: Advanced
Runtime: 91 minutes
Recorded Date: August 20, 2019
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  • Overview of Patents vs. Trade Secrets Protections
  • Intersection of Patent and Trade Secret: A Balancing Act
  • Trade Secret Protections
Runtime: 1 hour and 30 minutes
Recorded: August 20, 2019
For NY - Difficulty Level: Experienced attorneys only (non-transitional)


Patents and trade secrets are to a large extent mutually exclusive. Wise business executives need to strategize as to which form they choose to protect their intellectual property. To maximize intellectual property coverage, it is frequently desirable to patent certain aspects of a technology, while retaining trade secret status for other aspects. Yet, the coordination and integration of patent and trade secret rights must be done very carefully to ensure one form of protection does not destroy the other.

A panel of IP experts will not only explore recent developments and legal underpinnings relevant to the selection and integration of patent and trade secret rights, but also provide tips and tactics for coordinating patent and trade secret strategies to maximize protection and value. They will also cover the risks associated with overlapping patent and trade secret rights and highlight potential pitfalls you need to consider in your day-to-day practice.

This program was recorded on August 20th, 2019.

Provided By

American Bar Association
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Pejman F. Sharifi

Winston & Strawn, LLP

Pejman Sharifi advises clients on patent transactional, counseling, and litigation matters.

Pejman’s experience in patent transactional matters includes representing clients in protecting and prosecuting patent applications in the U.S. and abroad; managing patent portfolios; counseling clients with respect to strategy; developing patent portfolio mining programs; assisting with post-grant proceedings; developing patent application assets for assertion or licensing programs; developing corporate patent programs; advising with respect to patent eligibility and patentability; developing strategies for protecting software and business-related inventions in the U.S. and abroad; advising with respect to design patents; and assisting start-up enterprises in protecting core assets.

Pejman’s experience in patent counseling matters includes providing invalidity and non-infringement opinions; developing patent clearance strategies; assessing and responding to patent notification letters; evaluating intellectual property assets in the context of assertion or investment; providing IP due diligence for transactions; identifying and addressing core intellectual property issues in M&A transactions; drafting and negotiating agreements or intellectual property terms; conducting diligence to identify patents assets for acquisition; assisting clients with patent evaluation and acquisition; advising clients with respect to changes in patent law; preparing software license agreements; and advising with respect to copyright or trade secret risks in connection with reverse engineering or technology development programs; monitoring and advising with respect to competitor portfolios, and handling patent ownership issues.

Pejman’s patent experience in complex patent litigation includes developing offensive patent positions for assertion; assessing and developing validity case; assisting with depositions, motions, and trial; developing invalidity search strategy involving professional searchers and third-party discovery; reviewing and approving technology-related position in litigations; developing non-infringement, invalidity, and equitable defenses; interfaces with technical employees of client as part of investigating defensive or offensive positions; assisting with expert discovery, reports, and depositions; developing claim constructions positions; assisting with Markman hearings; assisting with technical tutorials; and leading joint defense group efforts with respect to invalidity.

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Klaus H. Hamm

Klarquist Sparkman, LLP

Klaus focuses his practice on a wide variety of intellectual property litigation, including patent, trade secret, copyright, trademark, and licensing disputes. He frequently leads litigation teams, and he has experience in all phases of litigation and in numerous technologies, including software, hardware, e-commerce, semiconductors, mechanical engineering, and pharmaceuticals. His clients range from the world’s most successful technology companies to startups. Klaus represents clients in federal courts across the country, particularly up and down the West Coast, in Texas, and in Delaware.

Before attending law school, Klaus worked for three years as a newspaper reporter for the Concord Monitor in New Hampshire. Klaus joined Klarquist in 2008 as a lateral associate and became partner in 2012.

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Sharae' L. Williams

Dickinson Wright, PLLC

Sharae’ L. Williams is an Associate in the firm’s Litigation Division. She practices in the areas of complex business litigation and intellectual property. Sharae’ received her undergraduate degree from Michigan State University and her law degree from Wayne State University Law School. Sharae’ began her career with Dickinson Wright PLLC by joining the firm as a Summer Associate in back-to-back years during 2016 and 2017. Sharae’s ultimate goal is to utilize her wide range of skills and knowledge to provide effective legal counsel and achieve the best possible outcome for her clients.

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R. Mark Halligan

FisherBoyles, LLP

Mark Halligan has been selected by Corporate LiveWire as the 2018 Innovator of the Year for his co-invention of the new Trade Secret Examiner software platform for trade secret asset management.

Legal 500 ranks Mr. Halligan as a leading lawyer in trade secrets litigation in the United States and Mr. Halligan has been inducted into The Legal 500 Hall of Fame. Chambers USA: America’s Leading Lawyers for Business ranks Mr. Halligan for his exceptional standing in intellectual property law. Managing Intellectual Property recognizes Mr. Halligan as an “IP Star.”

Mr. Halligan is a partner at FisherBroyles, LLP. He is an accomplished trial lawyer who focuses his practice on intellectual property litigation and complex commercial litigation, including antitrust and licensing issues. He is a Past President of the Intellectual Property Law Association of Chicago (IPLAC); the General Editor of the Intellectual Property Law Handbook (2017) published by the Illinois Institute for Continuing Legal Education (IICLE); and an Adjunct Professor in the L.L.M. Program at John Marshall Law School in Chicago.

Mr. Halligan is a graduate of the University of Cincinnati and the Northwestern University School of Law.

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