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Trade Secret Implications of the AIA: Choosing Between Patents and Secrets

Product Code - LGN234
Speaker(s): Chang B. Hong, Joule Unlimited Technologies, Inc.; Eric P. Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Jennifer H. Roscetti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
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Patents and trade secrets co-exist as separate intellectual property regimes, and as a result, businesses and inventors must often choose between patent and trade secret protection. Recent legislative changes, including the America Invents Act (AIA), directly affect this choice. For example, under the AIA, the prior user defense preserves the right to continue the practice of a trade secret invention in the United States despite subsequent issuance of a third-party patent.

The availability of this defense limits the need to patent every commercial improvement and simplifies freedom to operate analysis for commercial processes. With these advantages in mind, trade secrets could in some instances be a desirable alternative to patents. The faculty presenting this program will highlight issues to consider when choosing between patents and trade secrets in light of the recent legislative changes and court decisions.

Educational Objectives:

• Understand which subject matter is suitable for trade secret or patent protection.

• Learn about the impact of recent court action, including Supreme Court decisions, on what qualifies as patent-eligible subject matter.

• Discover new routes for 35 U.S.C. § 101 patentability challenges under the AIA.

• Gain insight into the impact of the AIA on trade secrets, including prior user rights.

• Understand the co-existence between patents and trade secrets.

• Hear about considerations when implementing a corporate trade secret program.

Who would benefit most from attending this program?

Practitioners dealing with intellectual property matters; corporate counsel for companies desiring to protect their intellectual property.

Program Level: Intermediate
Prerequisite: A general understanding of the four main forms of intellectual property.
CPE Delivery Method: Group Internet-Based Live
Field of Study: Specialized Knowledge and Applications
Recommended CPE Credit: 1.5 credits
Anticipated CLE Credit: 1.5 credits (may vary based on from which jurisdiction requested)

For additional information, please see the “CE Credit” tab.

Chang B. Hong, Joule Unlimited Technologies, Inc.; Eric P. Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Jennifer H. Roscetti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Chang B. Hong, Joule Unlimited Technologies, Inc.
Chang Hong currently serves as Vice President, Intellectual Property Counsel at Joule Unlimited Technologies, Inc., and leads Joule's intellectual property development and the strategy of its solar platform to convert waste CO2 into valuable fuels and chemicals. Mr. Hong began his career at GlycoFi, Inc., where he was instrumental in developing the company’s I.P. estate, which was acquired by Merck in 2006. Mr. Hong later held positions as I.P. Counsel to an international generics pharmaceutical company and a vaccines company, where he counseled senior management on developing I.P. strategy and portfolios, assessment third-party rights, and Hatch-Waxman litigation as well as due diligence, licensing, and contract matters. In addition to Joule, Mr. Hong is a Director and Co-Founder of Glycobia, Inc., a biopharmaceutical company focused on the production of biotherapeutics through glyco-engineering.

Mr. Hong earned a J.D./LL.M. in Intellectual Property from Franklin Pierce Law Center (now University of New Hampshire School of Law) and a B.S. in Biochemistry & Molecular Biology and Music from Dickinson College. He is a member of the Pennsylvania and New Jersey bars and is admitted to practice before the United States Patent and Trademark Office.

Eric P. Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Eric Raciti is a partner in Finnegan’s Boston office. He focuses his practice on intellectual property counseling, particularly in the fields of alternative energy, medical devices, consumer products, and mechanical engineering. He has worked with such diverse technologies as cardiac rhythm management and cardiology, electrochemical diagnostics, biomechanics and orthopedics, neuroscience, neuroradiology, biofuels, and smart grid management. Mr. Raciti chairs Finnegan’s alternative energy practice and was a resident partner in Finnegan’s European office in Brussels for two years. He also serves as editor-in-chief of Full Disclosure, Finnegan’s patent prosecution newsletter, including the French language version, Le Feu Vert.

Mr. Raciti earned an LL.M. in European Union Law from the University of Leuven, Belgium, a J.D. from the Catholic University of America, Columbus School of Law, and completed his undergraduate studies in industrial systems engineering at Virginia Polytechnic Institute and State University. He is admitted to practice in the District of Columbia and Massachusetts as well as before the U.S. Patent and Trademark Office.

Jennifer H. Roscetti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Jennifer Roscetti is a partner in Finnegan’s Washington, D.C. office. She practices patent litigation in a range of chemical and pharmaceutical fields before U.S. district courts and the U.S. International Trade Commission (ITC). She has particular experience in representing pharmaceutical patent holders in litigations arising under the Hatch-Waxman Act. Ms. Roscetti’s experience includes arguing a Markman hearing; examining and cross-examining fact and expert witnesses at trial; arguing discovery and scheduling motions; handling all aspects of trial preparation including patent litigation strategy development; working with expert witnesses; and conducting and defending key witness depositions.

Ms. Roscetti earned a J.D. from the University of Houston School of Law and completed her undergraduate studies in chemical engineering at the University of Kentucky. She is admitted to practice in the District of Columbia and Maryland as well as before the U.S. Patent and Trademark Office.

This program’s CLE-credit eligibility varies by state. Bloomberg BNA is an accredited provider in the states of New York*, California, Pennsylvania, Texas and Virginia, and most other jurisdictions grant CLE credit on a per-program basis. At this time, Bloomberg BNA does not apply directly to the states of Florida, Rhode Island, Montana and Hawaii although credit is usually available for attorneys who wish to apply individually. Additionally, the following states currently do not grant credit for Bloomberg BNA OnDemand programming: Arkansas, Ohio, Nebraska, and Delaware. All requests are subject to approval once the live webinar has taken place or the customer has viewed the OnDemand version. Please contact the Bloomberg BNA accreditations desk if you have specific questions that have not been addressed.

*Bloomberg BNA is an accredited provider in New York for experienced attorneys only.

Hardship Policy
For information regarding Bloomberg BNA’s Hardship Policy, please visit the Continuing Education Information page.

Individual programs, subjects, and formats may not receive credit in some states and there may be specific rules regarding who may earn credit or the maximum number of credit hours that may be earned with specific formats. For specific questions, contact your state MCLE regulatory entity for specific questions about your MCLE rules or visit the American Bar Association’s website for general information on accreditation.

If you have further questions regarding a specific state or how to file for CE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the CLE Accreditation Coordinator or send an email to