Lawyer Monthly Magazine - October 2019 Edition

no longer sufficient to be able to advise clients in your home jurisdiction. To empower clients with the information they need to succeed, you must provide globally oriented services, cognizant of the advantages and disadvantages that each jurisdiction or market offers. To preserve your trade secret rights in trade secret methods difficult or impossible to reverse engineer from study of the final product and reserve significant patent rights at the same time, file a US patent application first (a provisional or non-provisional, the non-provisional being filed with a non-publication request), and make a reasonable effort to protect the content of the patent application and of your trade secret process, secret. Given that the valid filing of a non-publication request is not possible once a foreign-to- the-US application has been filed, this requires that the priority applications for such technologies be filed in the US first. Doing so preserves all your options, maximizes your US rights, and can offer significant strategic advantages should you receive a cease and desist letter from the owner of a US patent covering your secret process. Unfortunately, preserving trade secret rights and patent rights in this manner is simply not possible once a European, Swiss, Japanese, Chinese or Korean patent application is filed. LM application can be postponed for years if the postponement is based on legitimate reasons. No prior user defense: The Leahy-Smith America Invents Act of 2011 (AIA) provides a “prior use defense” to patent infringement. Specifically, a party may defend a patent infringement suit by establishing clear and convincing evidence, that the patented subject matter was “commercially used” in the US at least one year before the effective filing date of the claimed invention. The new prior use defense provision applies to any patent issued on or after September 16, 2011. This defense is similar to what one finds in countries like Germany and Switzerland, in that the prior use had to have taken place a certain amount of time before the filing of the third party rights asserted against the defendant, and such rights are based on use in their country, not elsewhere. This means that all those practicing secret processes outside of the US simply have no prior user defense in the US. Therefore, failure to have timely reserved your patent rights in the US may leave you with no means to preserve the US market for your product, should a competitor assert patent rights against you there. Conclusion: Overall, the legal profession is becoming more global. It is 75 OCT 2019 | WWW.LAWYER-MONTHLY.COM First Choice Lawyers By John Moetteli, Esq., J.D., US, Swiss and European IP Attorney rything from start-up ventures to large corporations who we help in a wide range of intellectual property matters involving pat- ent, trademark, litigation and licensing, as well as computer law, with particular emphasis on software patenting and licens- ing. We are competent to help clients procure patent protec- tion in a wide variety of techni- cal fields, including computer software, mechanics, electron- ics, medical devices, industrial processes and biotechnolo- gies.” “Another core feature which sets our firmapart is the fact that our firm is qualified to prepare and file patent and trademark applications for clients directly in the US, Europe, Switzerland and Liechtenstein. We can therefore also provide strategic advice to clients on how to proceed in these markets without hav- ing to first seek the advice of a middle man. This also means we can provide quick and cost-ef- fective advice regarding issues that can affect our client’s IP properties in many critical world markets, an example of which is the ability to reserve patent rights and trade secret rights at the same time.” “Furthermore, because our at- torneys and staff speak fluent English, French, Italian, Ger- man and Spanish, we possess important language skills that help us keep in touch with our international client base online or through traditional means. Within the global legal econ- omy, Asia is a market which is currently growing rapidly, and as such, there is an ever- expanding market for the legal services we offer. As we look to grow our Asia practice in China and our Asia advisory here in Europe, under our Great Wall ™ brands. China has become an indispensable part of the Global economy, and so the protec- tion of IP rights there is critical for many businesses. ABOUT JOHN MOETTELI AND THE FIRM The author, John Moetteli, is managing attorney of Da Vinci Partners LLC, a team of US and European IP attorneys operat- ing through a Swiss-based firm who are able to offer their cli- ents a unique range of services. Supporting a wide range of international clients, Da Vinci Partners LLC, just two hours’ drive from the European Patent Office, an hour from Zürich, and 15 minutes from the Swiss patent court, draws on a vast wealth of experience and expertise. “Being US, European and inter- national patent attorneys, Da Vinci Partners can represent clients before national and in- ternational authorities in Europe, Switzerland, Liechtenstein and the US. As we have our head- quarters in Switzerland, we can represent essentially any cli- ent regardless of their country of domicile before the US and Swiss Patent and Trademark Office, as well as the European Patent Office. Further, using our extensive network of cor- respondents, we can manage any intellectual property matter anywhere in the world.” “For patents, although based in Europe, we generally choose to file in the US first because, al- though the laws are now more harmonized, the US still offers the flexible provisional patent ap- plication, offers six more hours to file an application given the time difference with Europe, al- lows filing patent applications in any language, and enables the protection of trade secrets while still reserving patent rights.” It is this innovative approach and the firm’s experience work- ing with European and US law that enables it to mark itself out from its competitors, as John highlights. “Thanks to our unique skillset, our firm’s main clients include eve-