Mark Scarsi, partner in Milbank, Tweed, Hadley & McCloy’s Intellectual Property Group, provided commentary to Law360 on IP legislation and regulation to watch in 2016.
On the topic of patent infringement allegations, Scarsi says more targeted legislation may gain traction in the coming year. He noted: “[W]hile the Demand Letter Transparency bill sets up an administrative apparatus and allows the USPTO to hold information on these entities, the TROL Act may be more effective because it creates a separate cause of action. “[The Demand Letter Transparency bill] relies on small companies to make some sense of what a demand letter is saying, but the [TROL Act] gives industrious lawyers an incentive to sue trolls under the Federal Trade Commission Act and seek damages,” he said. “Because there is no lobby strongly in favor of sending out demand letters, the measures may have an easier time getting through Congress than broader patent reform legislation. I could see these two bills combining and passing or being encompassed in other bills at the House. But if they stay separate, they may pass because they are not that controversial, he added.”
Scarsi also commented on the Defend Trade Secrets Act, noting: “[U]nlike patents, copyrights and most trademarks, trade secrets are an area of intellectual property law largely left to the states. Trade secrets are often an overlooked area of IP law, but this legislation could change that perception. A lot of companies might feel that protecting trade secrets under state law might not give them as much of an ability to go after competitors, but if this legislation passes, we could see more companies bringing trade secrets actions if a cause of action is available at the federal level. This really has the potential to transform the way people think of trade secrets and make trade secrets law more important.”
