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©2015 MKG, LLC1 International Intellectual Property Protection February 7, 2015 Elizabeth Galletta, Esq. John Mutchler, Esq. MKG, LLC Middletown, Connecticut
©2015 MKG, LLC 2 Types of IP Protection Patents Trademarks Copyrights Trade Secrets Contracts are how you authorize and/or limit the use or transfer of these rights. Lawsuits are how you stop unauthorized use and/or transfer of the rights. Rights
©2015 MKG, LLC3 IP General Attributes Intellectual Property is a form of personal property. It can be licensed, sold, inherited, or transferred to others. Patents and Trademarks are territorial A US patent or trademark registration can only be enforced with in the United States You need IP registrations to protect your invention/brand abroad
International Patents The World IP Organization (WIPO) is a part of the UN and oversees intellectual property filings and legislation in many countries. There are 188 Member States, just shy of the 192 Member States of the UN. In order to join WIPO, a state must be 1.A member of the Paris Union for the Protection of Industrial Property, or of the Berne Union for the Protection of Literary and Artistic Works; or 2.A member of the United Nations, or of any of the United Nations' Specialized Agencies, or of the International Atomic Energy Agency, or that is a party to the Statute of the International Court of Justice; or 3.Invited by the WIPO General Assembly to become a Member State of the Organization. © 2015 MKG, LLC 4
Patent Cooperation Treaty (PCT) Application Generic International Application – Must file domestically first or you lose the right to a US patent! – Gives you a window of 30 Months to enter National Stage in other countries – Allows you to “claim priority” to PCT filing date when entering other countries. There is no “international patent;” you must prosecute in each designated country separately. As of February 2015, there are 148 nations which can be designated from a PCT Application. – Islamic Republic of Iran and Saudi Arabia have joined since 2013 ©2015 MKG, LLC 5
Patent Cooperation Treaty Nations ©2015 MKG, LLC 6 Source: www.wipo.org/pct/en
Countries NOT covered by PCT Afghanistan Andorra Argentina Bahamas Bangladesh Bhutan Bolivia Burundi Cambodia Cape Verde Djibouti Eritrea Ethiopia Fiji Guyana Haiti ©2015 MKG, LLC7 Iraq Jamaica Jordan Kiribati Kuwait Lebanon Maldives Marshall Islands Mauritius Micronesia Myanmar (Burma) Nauru Nepal Pakistan Palau Paraguay Samoa Solomon Islands Somalia South Sudan Suriname Timor-Leste (East Timor) Tonga Tuvalu Uruguay Vanuatu Venezuela Yemen
PCT Application cont’d You will need to retain foreign counsel to file in other countries. Need Translations – Expect translation costs alone to top $2,000 per application In 2013, over 200,000 PCT applications were filed, a 5.1% increase over 2012. The benefits of filing here first include lower costs overall and a common priority date for all after-filed applications. ©2015 MKG, LLC 8
PCT Application cont’d ©2015 MKG, LLC 9 Source: www.wipo.org/pct/en
Direct Foreign Filing If you know you will only do business with one or two foreign countries, it may make sense to file directly. Retain local counsel to file in the local language. ©2015 MKG, LLC 10
Patents Abroad The number of patents granted worldwide stood at 1.17 million in 2013, a 3.1% increase on 2009. In 2013: – there were approximately 9.45 million patents in force worldwide – The U.S. had the most, at 2.39 million – Japan was second place, at 1.84 million – China rounded out the top three with over 1 million. There were a record number of PCT applications in 2013 with more than 200,000 applications filed. China and US drove the increase in filings. ©2015 MKG, LLC 11
International Trademarks Madrid Protocol – another part of WIPO – 88 nations agreed to accept a single international filing (PCT equivalent for trademarks); – Must designate where you want protection; – Each nation or region (Europe) conducts its own examination and issues its own trademark registration or refusal. National Filing – Direct filing with local counsel in official language of local office; and – Typically increased costs - national filing fees (in local currency), translation, and local counsel fees. © 2015 MKG, LLC 12
The Madrid Protocol Only need a single English-language application, and pay appropriate fees for each country/region in which you want protection; Simple management of fee payment, changes of ownership for all member countries; Nice Classification: – Must designate which of the 46 classes of goods & services with which your mark is associated; and – Only protected in those classes you designate. © 2015 MKG, LLC 13
A Side By Side Comparison of Filing Methods ©2015 MKG, LLC14 Many Offices for filing Many application forms Many languages Many currencies Many registrations Many renewals Many modifications Foreign attorney needed from filing One Office for filing One single application form One language (E/F/S) One currency (CHF) One international registration One renewal One modification Foreign attorney first needed in case of refusal Filing Nationally: Madrid Protocol:
Trademarks Worldwide In 2010, approximately 3.66 million TM applications were filed. In the case of a refusal in designated country, you will likely need local counsel to continue the prosecution with the foreign TM authority; it is not adjudicated through WIPO © 2015 MKG, LLC 15
IP Do’s and Don’t’s for Businesses ©2015 MKG, LLC16 Do review and protect innovations early and often Do use non-disclosure agreements (NDAs) Do identify the contributions of all parties (consultants, principals, employees) Do agree to the rights between parties (assignment, work-for- hire) Don’t wait! –Disclosure starts a 1- year countdown to loss of US patent rights –Outside the US, disclosure means you immediately lose the right to patent Don’t try to develop a market first, then try to secure rights later
Joint Venture Agreements ©2015 MKG, LLC17 Define the Project (Be Specific) Name and/or Register the Business Entity Ownership Interests of Members/Partners Duties and Obligations of Members/Partner: –Contributing to Capital Money or other Resources into venture Labor to Accomplish Goals of venture –Sharing Profit and Loss Accounting Methods Salaries and Compensation Management / Governance –Making Decisions (Authority to Act) –Settling Disputes Prohibited Acts –Binding the Business without Vote –Assigning Individual Rights in Business Incoming and Outgoing Members/Partners Termination/Dissolution of Business Entity
©2015 MKG, LLC18 MKG, LLC 306 Industrial Park Road, Suite 206 Middletown, CT 06457 860-632-7200 www.mkgip.com Thank you for your attention!!
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