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About
MIHR
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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JORDA, Karl F
Karl F. Jorda is the David Rines Professor of Intellectual Property Law as well as the Director of the Germeshausen Center for the Law of Innovation and Entrepreneurship at Franklin Pierce Law Center, where he primarily teaches Technology Licensing and IP Management. From 1995 to 2003, he also taught International IP Law as Adjunct Professor at the Fletcher School of Law and Diplomacy, Tufts University. Before joining Pierce Law in 1989, he was Chief IP Counsel for 26 years at CIBA-GEIGY Corporation (now Novartis, Syngenta, and Ciba Speciality Chemicals).
Dr. Jorda was President of the Pacific Intellectual Property Association (PIPA) and the New York Intellectual Property Law Association. He served on the Boards of Directors of AIPLA, ABA-IPL Section, INTA, IPO, ACPC and AIPPI-American Group. Dr. Jorda is also the recipient of several rewards: the 1996 Jefferson Medal of the NJIPLA, “the United States’ highest honor in intellectual property,” for “extraordinary contributions to the U.S. intellectual property law system”; the 1989 PIPA medal for “Outstanding Contributions to International Cooperation in the Intellectual Property Field”; and the 1998 Distinguished Alumni Award of the University of Great Falls. In 1990 and 1991, he served as a consultant to the Indonesian and Bulgarian IP offices. From 1999 to 2005, he was the U.S. Representative to the Confidentiality Commission of the Organization for the Prohibition of Chemical Weapons in The Hague, Netherlands.
Dr. Jorda received his undergraduate degree (summa cum laude) from the University of Great Falls, and an M.A. and a J.D. from Notre Dame University. He is admitted to the bars of Illinois, Indiana, and New York as well as to practice before the U.S. Supreme Court, the Court of Appeals for Federal Circuit, and the U.S. and Canadian Patent and Trademark Offices. He is a frequent speaker in IP programs in foreign countries under the auspices of WIPO, USAID, USIA, IESC, etc. He has lectured in 41 countries, 27 of them developing countries, including Madagascar and Mongolia.
Abstract
Trade Secrets and Trade-Secret Licensing
Abstract:
Exploiting the overlap between intellectual property (IP) categories, especially between patents and trade secrets, is an important facet of IP management. Patents (which require full disclosure) and trade secrets (which are kept confidential) are not incompatible. On the contrary, they can complement one another: patents protect inventions and trade secrets protect collateral know-how. Using patent and trade-secret protection together in a synergistic manner results in a potent exclusivity. Moreover, as licensing has become the preferred instrument for technology transfer, most technology licenses are hybrids, covering both patents and trade secrets. This situation has evolved because licenses that cover patents but do not allow access to collateral know-how usually do not permit patented technology to become commercialized. Despite the ease of obtaining trade-secret protection—immediate efficacy and low cost—this type of IP protection is too often neglected.
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