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Hodgson Russ's Clean and Green Law

Discovery Orders May Threaten Traditional Notions of Trade Secret Protection

Posted in Intellectual Property

combination lockHistorically, confidential and proprietary information, such as the formulas for Coca-Cola and Pepsi, is trade secret information that will not be made available to the public during litigation. While Coke and Pepsi are probably the two most famous examples of protectable trade secrets, many companies in varying industries rely on trade secret protection for financial success and competitive advantage. For example, manufacturing, pharmaceutical, and chemical companies often choose trade secret protection over patent protection either because a trade secret may enjoy a lifetime of protection, as opposed to twenty years, or simply because the trade secret formula or chemical composition does not rise to the level of non-obvious invention required for patent protection.

Regardless of the technological or business reason for choosing to protect your confidential and proprietary information as a trade secret as opposed to patent, that protection should not be threatened by discovery orders in a litigation that your company is not even a party to. However, recently a Pennsylvania state court decision highlights risk to trade secret protection for certain hydrofracturing fluid manufacturers in the oil and gas industry. Continue Reading

Teamwork Can Benefit Your Company’s Research, but Verify Inventors on any Resulting Patent Application

Posted in Intellectual Property

Laboratory glasswareMuch of today’s innovation is a collaborative process. In the past few weeks, stories were in the news about breakthroughs involving groups of researchers working on aluminum batteries, carbon electrodes for lithium-ion batteries, wearable power generation, and wireless power transmission. The prevalence of collaboration in research is reflected in U.S. intellectual property trends. A study in 2009 showed that, over the past four decades, the average number of inventors per patent increased. A study in 2013 showed that the number of patents with solo inventors fell between 2005-2013.

While collaboration has benefits, it can cause problems when it comes time to file a patent application. Not all work done by members of a project team may be sufficient to qualify everyone as joint inventors under U.S. patent law. The proper list of inventors on a patent application may not include all the project team members because each joint inventor must contribute in some significant manner to the formation of a definite and permanent idea for at least one claim of the invention. Thus, each joint inventor must conceive of something in the claims. Continue Reading

Video Interview: Discussing Lisa Jackson’s Resignation as EPA Administrator with LXBN TV

Posted in Renewable Energy

Following up on my post on the subject, I had the chance to chat with Colin O’Keefe of LXBN regarding Lisa Jackson’s resignation as EPA Administrator. In the brief interview, I offer my thoughts on her legacy and the recent controversy around the Agency’s use of email aliases to avoid the FOIA.


Michael Hecker is a senior associate in the Environment & Energy Practice at Hodgson Russ LLP. You can reach him at MHecker@hodgsonruss.com.

Patenting Your Basement Fusion Reactor: Utility Requirements Under U.S. Patent Law

Posted in Intellectual Property

lightbulbMultiple projects are currently underway to demonstrate feasibility of fusion energy. The goal of the ITER multinational project in southern France (of which the United States is a participant) is to deliver ten times the power that is consumed during operation. Back in the United States, Lockheed Martin’s Skunk Works is working on a more compact nuclear fusion reactor. However, if you ask certain inventors, fusion energy has already been demonstrated in labs, garages, and workshops. Some of them even filed patent applications, such as U.S. Pub. No. 20110044419 or U.S. Pub. No. 20040137289, to protect these valuable discoveries. But why haven’t more patent applications covering cold fusion matured into patents that can be licensed or shared for the benefit of mankind?

To be patentable, an invention needs to be useful, novel, and nonobvious. Continue Reading

Speeding Construction of Your Company’s ‘Great Wall’: Protecting Green Technology in China with Utility Models

Posted in Intellectual Property

Great Wall of ChinaThe Economist recently reported on a World Intellectual Property Organization study that the number of Chinese patents filed abroad is rising. China’s patent office was the busiest in the world in 2012. Coupled with this growth of IP, China is now the world’s largest economy, has a growing solar industry, and is leading the world in renewable investment. With China’s economic and IP growth, protecting your green technology in China is becoming more important. However, IP protection in China needs to be balanced against questions regarding the Chinese market, long-term plans for your green technology, or costs.

Chinese utility models provide a cheaper, faster alternative to a “regular” Chinese invention patent if your invention meets statutory requirements. Only shapes, structures, electrical circuits, or network diagrams can be protected by Chinese utility models. The claims cannot include methods or functional language. There are four main advantages for a Chinese utility model. Continue Reading

Multistate ZEV Plan Looks to Increase the Use of Zero-Emission Vehicles Through Infrastructure Development, Standardization, and Taxpayer Incentives

Posted in Renewable Energy

This entry was authored by Hodgson Russ summer associate Jonathan Jasinski. Jonathan is a student at Vanderbilt University Law School.

tire tread close upOn May 29, 2014, the ZEV Program Implementation Task Force issued a 32-page action plan detailing the efforts that eight states will undertake to increase the number of zero-emission vehicles (ZEVs) in use. ZEVs are battery electric, hybrid, and hydrogen fuel cell vehicles. The task force was created by a memorandum of understanding signed by the governors of California, Connecticut, Maryland, Massachusetts, New York, Oregon, Rhode Island, and Vermont in late 2013. Each of the states have taken some steps to promote ZEVs; the task force’s goal is to coordinate those efforts through joint implementation of the action plan.

What Does the Plan Entail?

The action plan’s primary objective is to have 3.3 million ZEVs in use in the eight signatory states by 2025. To say this represents a large increase is quite an understatement; although ZEVs have been widely available since 2010, only about 200,000 have been sold nationwide. To promote increased ZEV sales, the action plan suggests several “key actions” for the states to take: Continue Reading

Take Off Every Zig: The Risk in Tesla’s “All Our Patent Are Belong to You” Message

Posted in Intellectual Property

Tesla sports car chargingWith a title parodying a classic Internet meme, Elon Musk announced on June 12, 2014, that “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.” Musk plans to continue filing additional patent applications and will make subsequent patents freely available as well. This benefits the planet, future generations around the globe, and—more particularly—Tesla, in that it could speed adoption of electric vehicles and the construction of charging stations.

At this point, it’s still not totally clear what Tesla considers to be “good faith.” Musk indicated Tesla was “looking for common sense and fairness.” As an example, Musk clarified that Tesla does not want a competitor to mimic Tesla’s cars or to trick consumers into thinking a competitor’s car is actually a Tesla car. Aiming to provide some additional clarification, Musk also said that Tesla is open to simple agreements with companies worried about what freely using Tesla’s patents “in good faith” actually means. Continue Reading

Department of Commerce Announces Preliminary Decision to Impose Tariff on Solar Panels Imported From China

Posted in Renewable Energy

Solar PanelsThis entry was co-authored by Hodgson Russ summer associate Alyssa Helfer. Alyssa is a student at University of Pennsylvania Law School.

Some U.S. solar equipment manufacturers have lauded the Department of Commerce’s recent decision to impose high tariffs on solar panels imported from China as the end of China’s unfair market advantage; however, from the standpoint of domestic installation companies, the future of affordable solar power doesn’t look so bright.

Currently, solar panels in China are produced with the financial assistance of a government subsidy. In 2011, SolarWorld Industries America Inc., the largest manufacturer of solar panels in the United States and leader of the Coalition for American Solar Manufacturing (CASM), filed a petition with the Department of Commerce seeking to impose import duties on solar products manufactured in China. Due to the subsidy, these panels were sold in the United States at lower prices than their domestic competitors. The Department of Commerce ultimately responded by issuing a final decision in 2012 that placed import duties on panels containing Chinese-made solar cells. Chinese exporters have since been circumventing this 2012 order by using cells manufactured in Taiwan in their panels, which allows the panels to be exported to the United States duty free. This business model allowed Chinese manufacturers to sell their products in the United States at a fraction of the price charged by their domestic counterparts, effectively pricing U.S. manufacturers out of the market. Continue Reading

U.S. EPA Approves ASTM E1527-13 for Application to the All Appropriate Inquiry Rule

Posted in Green Building

Effective December 30, 2013, the United States Environmental Protection Agency (EPA) has amended its “All Appropriate Inquiries” Rule (AAI Rule) to reference the recently published American Society for Testing and Materials (ASTM) E1527–13 “Standard Practice for Environmental Site Assessments: Phase I Environmental Site Assessment Process,” commonly referred to as the “ASTM Phase I Standard.” The amendment approves the use of the new standard for purposes of meeting the AAI Rule requirements.

The AAI Rule sets forth federal standards and practices related to evaluating a property and its environmental conditions, as well as assessing the likelihood of the presence of any contamination. Continue Reading

Cuomo Announces State Investment of $225 Million Toward the Buffalo High-Tech Manufacturing Innovation Hub

Posted in Investing

Buffalo, NY SkylineOn November 21, 2013, Governor Cuomo announced the state’s commitment of $225 million toward the creation of a clean energy research campus in Buffalo, New York. Referred to as the RiverBend project, the campus is slated for the former Republic Steel brownfield site along the Buffalo River and represents almost a quarter of the governor’s $1 billon pledge for state investment in Buffalo. The RiverBend project will develop high-tech facilities, with state-of-the-art equipment, for use by clean energy firms. The model consists of significant state investment in high-tech equipment and facilities that are in high demand and difficult for firms to acquire on their own. This approach was used in developing the state’s nanoscience research and development facility in the Capital District. Continue Reading