Attorneys Craane and Hoover Share Perspectives with Northwestern University Law Students

February 24, 2012

On February 21 and 22, Marshall, Gerstein & Borun attorneys Marsha K. Hoover, Michael R. Graham and Paul C. Craane participated in the Intellectual Property Law Society Week at the Northwestern University School of Law. Marshall, Gerstein & Borun is a sponsor of the Intellectual Property Law Society, and Kimberly Berkowski, who is a patent agent at the firm, is a student member.

Mr. Craane was a panelist for "Patent Reform: The America Invents Act and Beyond" on February 21. Mr. Graham and Ms. Hoover were panelists for "Adapting to the Tech Era: Intellectual Property Management on the Internet" on February 22.

"The America Invents Act represents a watershed in US patent law," according to Mr. Craane. "It is the perfect time to discuss the principles that underlie our patent system, how we value those principles, and how changing valuations lead to changes in the law." Among the topics discussed were the change to a first-inventor-to-file system, the introduction of new forms of post-grant challenge within the United States Patent and Trademark Office, and the USPTO rulemaking presently occurring to implement the AIA.

Ms. Hoover and Mr. Graham discussed challenges brand owners face in protecting their intellectual property rights on the Internet, including the difficulty of protection trademarks around the world, something that has become increasingly important as commerce migrates to cyberspace. "Many countries around the world are ‘first to file’ trademark jurisdictions," Ms. Hoover explained. "The Internet makes it easy for trademark pirates to monitor United States brands and beat their owners to the trademark office in their country." She also discussed some of the practical and procedural obstacles to stopping foreign-based infringement.

Mr. Graham explained recent developments in domain name ownership, including ICANN’s generic top level domain name program that is currently rolling out, and national and international legislation. "The laws protecting trademarks and other intellectual property on the internet is changing rapidly, and broadening to include new areas such as cloud and open source licensing, online privacy, and anti-counterfeiting efforts."

Both Hoover and Graham agreed that "the very uncertainties and changes in the laws that make managing intellectual property rights on the internet increasingly challenging, also make this an exciting and increasingly important area of practice."