Intellectual Property Information

08.25.2020 | Speaking Engagements & Firm Events

Managing a remote workforce presents unique challenges. With the unexpected shift to working from home when the shelter-in-place orders went into effect, most employers did not have time to consider the risks and put safeguards in place. However, as remote working becomes an ongoing and potentially long-term option, employers should take the time to consider several issues our advisors will discuss in the webinar below:

• The legal risks of managing a remote workforce
• Best practices employers should have in place to manage those risks and otherwise comply with laws
• How employers can secure their confidential information with a remote workforce

Meet our Trusted Advisors

	Sarju Naran is a zealous advocate for his clients and approaches litigation with creativity and strategy. Chair of Hoge Fenton’s Employment Law Group, Sarju’s experience spans from representing middle-market and family-owned closely held businesses to large multi-national companies. He regularly litigates and provides advice and counsel to companies on wage and hour issues, trade secret misappropriation, employee mobility, wrongful termination, performance management, and leaves of absence.
	Stephanie O. Sparks is a shareholder and chairs the firm’s Privacy & Data Security team. She counsels companies on privacy laws and helps them develop and implement administrative, technical, and physical safeguards for data security. Stephanie also provides privacy and data security awareness training; prepares privacy, bring your own device and other privacy-related company policies, record retention/destruction schedules, and data breach incident response plans; and drafts and negotiates data processing agreements, and other agreements involving privacy, data transfers and data protection.
	As Development Director of ZAG Technical Services, Joe Foos leads the firm’s new partnerships and alliances with client industry associations, vendor peer groups, and community organizations. He enables clients to succeed by advising them on how to leverage technology for a competitive advantage. For over 25 years, Joe has worked with organizations in the Silicon Valley Bay Area and beyond, always starting with asking why a choice is being made, before helping with the mechanics of how to support or change a decision, for a better outcome.
	Hon. Catharine Baker will be moderating the discussion. She is currently Special Counsel at Hoge Fenton in Pleasanton, California. Catharine was a Member of the California State Assembly for the 16th District from 2014 – 2018. During her legislative tenure, Catharine developed a reputation as an independent, bipartisan voice in the CA Legislature, fostering collaboration that led to breakthroughs in significant legislation, particularly on transportation, the environment, and government accountability.

This information is provided as an educational service by Hoge Fenton for clients and friends of the firm. This communique is an overview only, and should not be construed as legal advice or advice to take any specific action. Please be sure to consult a knowledgeable professional with assistance with your particular legal issue. © 2020 Hoge Fenton

07.13.2020 | Firm Post

Thank you to everyone who joined us for our Your IP: Better than Gold in Turbulent Times webinar. Please click below to watch the recorded webinar.

We hope you found the discussion with Hoge Fenton patent attorney Amy Embert , Managing Director of Andersen Petra Loer, CFO for start-ups Betty Kayton, and CTO of the Fogarty Institute Denise Zarins helpful.

Please do not hesitate to reach out to Amy Embert if you need more guidance and visit our Reopening California Resources page for additional support.

	Amy Embert is an experienced patent attorney focused on helping clients maximize and protect their company’s intellectual property. Amy works with companies at all stages of growth to develop rock solid patent portfolios that highlight their expertise and establish sustainable competitive advantage in the marketplace. Amy works with companies in multiple industries including medical device, IT, software, semiconductor, material science, computer hardware, consumer electronics, optics, photonics, and apparel.
	Petra Loer is a Managing Director in the Valuation Services Group at Andersen. Her experience includes the valuation of closely held businesses, business interests, intangible assets, intellectual property, debt instruments, and derivatives. These engagements span a variety of purposes, including financial reporting, tax planning and reporting, mergers and acquisitions, litigation support, strategic planning, and restructuring.
	Betty Kayton is a CFO for start-ups and a member of the Board of Directors of Financial Executives International. As an early member of the venture-funded start-up executive team, Betty develops and implements infrastructure for rapid growth. She manages all finance and administrative functions, enabling the executive team to focus on achieving product milestones and acquiring customers. In 2017, Betty was honored as the Financial Executive of the Year for small, private companies.
	Denise Zarins , CFO of the Fogarty Institute will be our moderator. She has over 20 years of experience conceptualizing and developing products in the medical device industry. Denise began her career as a research and development engineer and manager at AneuRx, a startup that was founded by Dr. Fogarty and later acquired by Medtronic (MDT:NYSE). She subsequently joined another Fogarty-backed startup, Bacchus Vascular, which was later acquired by Covidien.

This information is provided as an educational service by Hoge Fenton for clients and friends of the firm. This communique is an overview only, and should not be construed as legal advice or advice to take any specific action. Please be sure to consult a knowledgeable professional with assistance with your particular legal issue. © 2020 Hoge Fenton

06.29.2020 | Firm Post

Thank you to everyone who joined us for our CCPA Enforcement webinar last week. Please click below to watch the recorded webinar.

We hope you found the discussion with Privacy & Data Security and Intellectual Property Chair Stephanie Sparks beneficial. Please do not hesitate to reach out to Stephanie if you need more guidance.

Stephanie O. Sparks  Shareholder, Chair Privacy & Data Security Intellectual Privacy +1.408.947.2431 Email Here

Stephanie O. Sparks  is a shareholder of, and chairs the firm’s Privacy & Data Security and Intellectual Property teams. She counsels companies on privacy laws and helps them create and implement administrative, technical, and physical safeguards for data security. Stephanie also conducts onsite data security and compliance assessments; provides privacy and data security awareness training; prepares record management policies, record retention/destruction schedules, and data breach incident response plans; prepares and advises on Data Processing Addenda, and other agreements involving privacy and data transfers and protection. Stephanie manages an online service provider’s responses to government requests for information, including search warrants, pen register trap & trace orders, and Title III electronic surveillance orders. She helps firm clients prepare for, and she manages all aspects of, the inevitable data breach.

This information is provided as an educational service by Hoge Fenton for clients and friends of the firm. This communique is an overview only, and should not be construed as legal advice or advice to take any specific action. Please be sure to consult a knowledgeable professional with assistance with your particular legal issue. © 2020 Hoge Fenton

06.16.2020 | Speaking Engagements & Firm Events

In uncertain times, businesses conserve cash. They also make strategic investments to maintain and grow their long-term value. Join our panel of trusted advisors as they discuss why now – more than ever – investing in your company’s intellectual property is your smartest move.

In this fireside chat, our panel will share their personal experiences regarding the following topics:

• How the VC funding landscape has changed as a result of COVID-19
• Whether IP-heavy companies are faring better in today’s challenging environment
• The importance of IP in valuing a business
• What investors want to know about your IP strategy
• How to build a well-managed IP portfolio that adds value to a business

Meet our Trusted Advisors

	Amy Embert is an experienced patent attorney focused on helping clients maximize and protect their company’s intellectual property. Amy works with companies at all stages of growth to develop rock solid patent portfolios that highlight their expertise and establish sustainable competitive advantage in the marketplace. Amy works with companies in multiple industries including medical device, IT, software, semiconductor, material science, computer hardware, consumer electronics, optics, photonics, and apparel.
	Petra Loer is a Managing Director in the Valuation Services Group at Andersen. Her experience includes the valuation of closely held businesses, business interests, intangible assets, intellectual property, debt instruments, and derivatives. These engagements span a variety of purposes, including financial reporting, tax planning and reporting, mergers and acquisitions, litigation support, strategic planning, and restructuring.
	Betty Kayton is a CFO for Startups and a member of the Board of Directors of Financial Executives International. As an early member of the venture-funded start-up executive team, Betty develops and implements infrastructure for rapid growth. She manages all finance and administrative functions, enabling the executive team to focus on achieving product milestones and acquiring customers. In 2017, Betty was honored as the Financial Executive of the Year for small, private companies.
	Denise Zarins , CFO of the Fogarty Institute will be our moderator. She has over 20 years of experience conceptualizing and developing products in the medical device industry. Denise began her career as a research and development engineer and manager at AneuRx, a startup that was founded by Dr. Fogarty and later acquired by Medtronic (MDT:NYSE). She subsequently joined another Fogarty-backed startup, Bacchus Vascular, which was later acquired by Covidien.

This information is provided as an educational service by Hoge Fenton for clients and friends of the firm. This communique is an overview only, and should not be construed as legal advice or advice to take any specific action. Please be sure to consult a knowledgeable professional with assistance with your particular legal issue. © 2020 Hoge Fenton

06.04.2020 | Firm Post

We are Here to Help

Hoge Fenton understands that our clients, employers, and organizations may have numerous questions and concerns about reopening their business. As you begin to face the business and legal implications of the COVID-19 crisis, our attorneys remain committed to assisting you overcome these obstacles.

To provide some guidance on some of the issues that have affected or will be affecting businesses, we have created a Reopening California resources page to support you in the following areas:

• Bankruptcy Information
• Corporate & Business Law
• Employment Law
• Family Law Counseling & Litigation
• Intellectual Property
• Real Estate and Land Use
• Tax/Trusts & Estates
  

This information is provided as an educational service by Hoge Fenton for clients & friends of the firm. This communique is an overview only, & should not be construed as legal advice or advice to take any specific action. Please be sure to consult a knowledgeable professional with assistance with your particular legal issue. © 2020 Hoge Fenton

06.02.2020 | Firm Post

Since COVID-19 became a pandemic, Hoge Fenton has “fast tracked” its legal services for technologies that help with the COVID-19 pandemic. The firm’s intellectual property group has prioritized patents, trademarks, and related services for technologies that are designed to help with the novel Coronavirus pandemic. Many of these technologies are now making their way to market.

Here are some of the COVID-19 innovations being brought to market by our clients:

• One client is developing a ventilator that is easily, quickly, and inexpensively manufactured. The project is a direct response to the shortage of ventilators caused by the COVID-19 Pandemic. These ventilators could save thousands of lives by increasing the availability of ventilators worldwide.
• Another client has developed a respiratory training device to help patients monitor their breathing and lung capacity. As the COVID-19 disease progresses in a patient, the patient’s lung capacity is often affected. This device detects breathing problems and gives the patient feedback as they try to improve their ability to breathe.
• A third client is using acoustics (sound waves) to assess lung health, also helpful for many COVID-19 patients. The device can detect if there is fluid in the lungs or air trapped in the lungs.
• Other inventions from our clients include a customized respirator mask and an ultraviolet light-based sanitation device for the sterilization of masks, equipment, and other objects.

These companies have ambitious timelines to secure patent protection. Patent protection is needed urgently in order to raise the funds needed to bring these devices to market. Hoge Fenton has helped these companies be first in line with their ideas at the Patent Office.

Hoge Fenton’s Managing Shareholder, Dan Ballesteros, commented that, “Hoge Fenton is honored to help these companies save lives by supplying ventilators and other technologies to healthcare systems around the world. We salute the efforts of these innovators who are developing new technologies to help people around the world cope with this pandemic.”

Contact Hoge Fenton’s intellectual property group for patent, trademark, licensing and other intellectual property needs, challenges, and questions.

Dana Brody-Brown is an experienced IP and brand management attorney with a special focus in the areas of trademark counseling and prosecution, including trademark audits, portfolio analysis and strategic counseling, selection and searching of trademarks, domestic and worldwide registration and enforcement, domain name issues, and licensing. Dana also has a special interest and wealth of experience in assisting growing companies in developing and managing international trademark portfolios. For questions, please contact Dana at +1.408.947.2433 or email here.

Amy Embert is an experienced patent attorney focused on helping clients maximize and protect their company’s intellectual property. With over 14 years of patent prosecution experience, she counsels clients on the development, prosecution, and management of their domestic and international patent portfolios. Amy works with companies at all stages of growth in multiple industries and is intimately involved with the Silicon Valley Start-up community. For questions, please contact Amy at +1.408.947.2420 or email here .

This information is provided as an educational service by Hoge Fenton for clients and friends of the firm. This communique is an overview only, and should not be construed as legal advice or advice to take any specific action. Please be sure to consult a knowledgeable professional with assistance with your particular legal issue. © 2020 Hoge Fenton

05.27.2020 | Firm Post

As we emerge from the immediate crisis of the COVID-19 pandemic and begin to move forward, we find ourselves in a different economy than the one we remember before we started sheltering in place.

While we hope the economy will roar back, now is the time to think about how we preserve our business assets in a down economy. Intellectual property assets can play key roles.

1) Why preserve your IP Assets?

Your IP can be a substantial part of your company’s long-term value. It’s important to protect your IP portfolio so your company’s competitive advantages help it get through the downturn and prosper during the recovery. Here are some cost-effective measures your business can take to preserve its IP:

• Attend to maintenance filings required to keep your trademark registrations in place for active marks. This prevents the registrations from being cancelled for failure to renew.
• Continue to invest in patents critical to your company’s future. Evaluate your existing and planned product and service lines to determine what patent assets are important for your business’ future.

2) Prioritize Activity and Seek Efficiencies

Perhaps you had planned to search and protect 3 new product marks this year and you have maintenance filings due for 5 marks in multiple jurisdictions. In a down economy you may not have the budget to do all of those things, and it may be necessary to prioritize. Are all three new product marks necessary? Or can some or all of the products be released under the house brand, with a generic descriptor? If tough decisions have to be made regarding which international registrations to maintain, you may need to prioritize your house marks, then other active marks, and prioritize your company’s most important jurisdictions (markets).

Perhaps you had planned to launch products in Europe and Asia next year but are now reconsidering this strategy due to global economic events. Now may be the time to evaluate your international plans to determine where innovation needs to be protected in the near and long term.

Also consider cost-saving filing mechanisms, such as the Madrid Protocol, for achieving broader coverage/ protection at a typically lower price tag. Since this filing mechanism can be done by your primary trademark counsel and does not require the hiring of local counsel in each country until and unless Office Actions are issued, for certain types of marks, it can be a cost efficient option .

3) Look for Licensing Opportunities

Licensing can transform your IP from a cost center to a profit center! A down economy can be an excellent time to license your IP for the following reasons:

• Licensing trademarks or patents is a way to reduce or eliminate manufacturing costs, either by reducing or eliminating manufacturing activity or adding manufacturing capacity by allowing a qualified licensee to take over some of the manufacturing.
• A brand extension licensing arrangement allows the Licensee to make and sell related (but not identical) goods or services using the same mark. The Licensee might value the recognition associated with your brand, which can make it a lucrative arrangement for your company, wherein the company derives royalties from third party use of the mark on licensee manufactured products.
• Licensing trademarks and patents for newly discontinued products or services is a high margin, effective way to continue to monetize the products or services even though they have been discontinued.

4) Smart Enforcement / Defense

• Delays in enforcement will likely lead to delays in profits from licensing agreements and partnerships. If you have IP enforcement actions pending (offensive or defensive), a down economy can be a good incentive for both parties to find creative settlement resolutions. It’s not the ideal time for protracted and expensive legal battles, but IP enforcement activity should not be abandoned during a downturn, as doing so can impair your ability to enforce in the future.

In sum, your company’s IP portfolio will outlive an economic downturn. While cost cutting is a necessity of any downturn, smart strategic decisions about your IP will ensure that your company has a promising future.

Dana Brody-Brown is an experienced IP and brand management attorney with a special focus in the areas of trademark counseling and prosecution, including trademark audits, portfolio analysis and strategic counseling, selection and searching of trademarks, domestic and worldwide registration and enforcement, domain name issues, and licensing. Dana also has a special interest and wealth of experience in assisting growing companies in developing and managing international trademark portfolios. For questions, please contact Dana at +1.408.947.2433 or email here.

Amy Embert is an experienced patent attorney focused on helping clients maximize and protect their company’s intellectual property. With over 14 years of patent prosecution experience, she counsels clients on the development, prosecution, and management of their domestic and international patent portfolios. Amy works with companies at all stages of growth in multiple industries and is intimately involved with the Silicon Valley Start-up community. For questions, please contact Amy at +1.408.947.2420 or email here .

This information is provided as an educational service by Hoge Fenton for clients and friends of the firm. This communique is an overview only, and should not be construed as legal advice or advice to take any specific action. Please be sure to consult a knowledgeable professional with assistance with your particular legal issue. © 2020 Hoge Fenton