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Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad Dorian Mazurkevich Attorney-Advisor Office of Enforcement.

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Presentation on theme: "Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad Dorian Mazurkevich Attorney-Advisor Office of Enforcement."— Presentation transcript:

1 Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad Dorian Mazurkevich Attorney-Advisor Office of Enforcement U.S. Patent and Trademark Office Conference on Intellectual Property in the Global Marketplace

2 Protecting and Enforcing Your Intellectual Property Rights How to protect your intellectual property rights? –Strategic and Operational Measures Tips to prevent the theft of your intellectual property before it happens. How to enforce your intellectual property rights? –Legal Measures Available options if your intellectual property is stolen.

3 Protecting Your Intellectual Property Rights What exactly am I protecting? What do I do to protect the intellectual property that I have identified?

4 What am I protecting? –Determine what intellectual property your business has by conducting an Internal IP Audit to identify: Copyrights Trademarks Patents Trade Secrets Protecting your Intellectual Property

5 Conducting an Internal IP Audit –Trademarks: Registered Marks Business Names Logos Slogans Domain Names Product Packaging/Configuration Website Design Protecting your Intellectual Property

6 Conducting an Internal IP Audit –Copyrights: Registered Copyrights Written Materials Photographs Illustrations Computer Software Music/Film Website Content Protecting your Intellectual Property

7 Conducting an Internal IP Audit –Patents: Issued Patents Pending Applications Mechanical Devices Electronic Devices Medicine/Medical Devices Chemical Composition/Process Computer-Based Business Process (Software) Protecting your Intellectual Property

8 Conducting an Internal IP Audit –Trade Secret: … means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Protecting your Intellectual Property

9 Trade Secret Factors: 1.Known outside of your business? 2.Known by those inside your business? 3.Measures to guard secrecy? 4.Value of the information? 5.Effort/cost in developing? 6.Easy to duplicate? Protecting your Intellectual Property

10 Trade Secret Factors: –Maintaining Secrecy Limit Distribution Mark Confidential Secure Facilities and Files Enact Policies and Procedures Contracts with Employees and 3 rd Parties Protecting your Intellectual Property

11 Conducting an Internal IP Audit –Trade Secrets: Customer Lists Pricing/Cost Data Customer Information and Sales Practices Business Plans Financial Data/Forecasts Manufacturing Techniques Design Manuals Production Processes/Specifications Survey/Research Data (including negative R&D) Protecting your Intellectual Property

12 What am I protecting? –Identify the IP in your business: Copyrights Trademarks Patents Trade Secrets –Can be a mixture of IP for single product. Protecting your Intellectual Property

13 Prioritize your IP: –Cost vs. Benefit –Offensive vs. Defensive Value Implement measures to protect the IP that you have identified: –Internal (inside your business) –External (dealing with 3 rd parties) Protecting your Intellectual Property

14 Internal Measures to Safeguard your IP –Register IP –Pay maintenance and renewal fees –Confirm you own the IP –Take steps to secure your confidential information Protecting your Intellectual Property

15 Trade Secret Protection –Company Policies: Restrict physical access, lock premises, file cabinets, etc. Mark all confidential and trade secret documents CONFIDENTIAL. Limit access and distribution of confidential documents to necessary employees. Shred and retrieve any distributed documents (failed mergers, departing employees). Use computer encryption, password protection, firewalls, network security, esp. with laptop users. Protecting your Intellectual Property

16 Trade Secret Protection –Employee Policies: Non-Disclosure Agreement Non-Compete Agreement IP Assignment Employee Manual - policy and procedures on treatment of confidential information: regarding publications/speeches to prevent disclosure (i.e. trade secret review) regarding submission of ideas, new patents (i.e. inventors notebook) Exit Interview Protecting your Intellectual Property

17 External Measures to Safeguard IP –Important with any business transaction with 3 rd parties involving IP: Acquisition Merger Licensing Joint-Venture Sale Protecting your Intellectual Property

18 External Measures to Safeguard IP –Conduct Due Diligence of 3 rd Party: Assess the 3 rd Party Identify the IP Review Underlying Documents (e.g. assignments, licenses, registrations, applications) Verify Ownership/Proper Chain of Title Lawsuits/Threatened Claims Protecting your Intellectual Property

19 External Measures to Safeguard IP –Conduct IP Review of Transaction: Confidentiality /Non-Disclosure Agreement Exclusivity Territoriality Field of use Quality control Inspections/Audits Indemnification Clause Protecting your Intellectual Property

20 External Measures to Safeguard IP –Police your IP: Review market Monitor competitors filings Risk assessment Monitor internal controls –Enforce your IP: Take legal action when necessary. Protecting your Intellectual Property

21 Protecting and Enforcing Your Intellectual Property Rights How to enforce your IP? –Legal Options: Civil Criminal Administrative

22 Enforcing Your Intellectual Property Rights Legal Measures to Enforce your IP: –Civil System State and Federal Alternative Dispute Resolution (ADR) –Criminal System U.S. Department of Justice –Administrative System U.S. Customs (Border Enforcement) U.S. Patent & Trademark Office

23 Enforcing Your Intellectual Property Rights Enforcing IP Through the Civil Court System: –Determine Whether Your IP Has Been Taken or Copied Infringement Determination –Send Cease and Desist Letter –Negotiate or Enter into Licensing Agreement –File Claim State or Federal Court ADR

24 Enforcing Your Intellectual Property Rights Patent Infringement: 1.Claim Construction By Judge: Determines the meaning and scope of the claims in the patent. 2.Infringement Analysis By Jury: Comparison of the properly construed claims to the accused device.

25 Enforcing Your Intellectual Property Rights Patent Infringement Defenses: No Infringement Patent Invalidity Laches Inequitable Conduct Patent Misuse Experimental Use

26 Enforcing Your Intellectual Property Rights Trademark Infringement –Is there a likelihood of confusion from the perspective of the reasonable prudent purchaser? Strength of the plaintiffs trademark Similarity between the trademarks Proximity of the products in the marketplace Likelihood that the prior owner will bridge the gap Evidence of actual confusion Defendants good faith in adopting the mark Quality of the defendants product Care and sophistication of the buyers

27 Enforcing Your Intellectual Property Rights Trademark Infringement Defenses: No Infringement Abandonment Laches Fraudulent Registration Acquiescence Nominative Use (Comparative Advertising) Parody

28 Enforcing Your Intellectual Property Rights Copyright Infringement –Proof of Access to the Work –Substantial Similarity Vicarious Copyright Infringement –Copyright infringement by someone else –Ability to control and financial benefit Contributory Copyright Infringement –Copyright infringement by someone else –Knowledge and substantial participation

29 Enforcing Your Intellectual Property Rights Copyright Infringement Defenses –Non-infringement/Independent creation –Inequitable conduct –Laches –Fair use: 1.Type of use (commercial, nonprofit, or educational) 2.Nature of work (factual or creative) 3.Amount taken 4.Market effect

30 Enforcing Your Intellectual Property Rights Misappropriation of Trade Secret –Acquisition of a trade secret of another byimproper means, such as: Theft Bribery Misrepresentation breach of duty to maintain secrecy Inducement of a breach of duty to maintain secrecy Espionage through electronic or other means

31 Enforcing Your Intellectual Property Rights Misappropriation of Trade Secret Defenses: –Not a Trade Secret: Secrecy Not Maintained Information Publicly Available –Reverse Engineering

32 Enforcing Your Intellectual Property Rights Infringement / Misappropriation Remedies: –Injunction –Damages Reasonable Royalty Lost profits For patents, if willful infringement: 3x damages assessed and/or attorneys fees For copyrights, can elect to get statutory damages –Pre/Post-Judgment Interest

33 Enforcing Your Intellectual Property Rights If You Determine Your IP Has Been Infringed? –Cease and Desist Letter Provides notice that infringement has occurred In patent case, other party may file a Declaratory Judgment Action –Negotiate / Enter into Licensing Agreement –File Lawsuit Litigation is costly IP can be found to be invalid –Alternative Dispute Resolution (ADR)

34 Enforcing Your Intellectual Property Rights Civil Court System: –Federal Courts Copyrights Trademarks Patents –State Courts Trade Secrets Trademarks

35 Enforcing Your Intellectual Property Rights Alternative Dispute Resolution (ADR): –Arbitration Neutral 3 rd Party Makes Binding Ruling Adversarial –Mediation Neutral 3 rd Party Facilitates Resolution Non-adversarial –Benefits Speed, Economy, Confidential, Select Venue, Select Rules

36 Enforcement of Intellectual Property: Criminal Enforcing IP Through the Criminal System: U.S. Department of Justice –Criminal Division: Computer Crime & Intellectual Property Section (CCIPS) –U.S. Attorneys Office: Computer Hacking and Intellectual Property Units (CHIPS) –Federal Bureau of Investigation U.S. Immigration & Customs Enforcement (ICE) The National Intellectual Property Rights Coordination Center (IPR Center) –Online IP complaint form at:

37 Enforcement of Intellectual Property: Criminal Criminal Statutes Involving IP: –Criminal Copyright Infringement (17 USC 506) –Trademark Counterfeiting Act (18 USC 2320) –Economic Espionage Act (18 USC 1832) –Smuggling Goods into the U.S. (18 USC 545) –Bootlegging Music (18 USC 2318) –Counterfeit Labeling (18 USC 2318)

38 Enforcement of Intellectual Property: Criminal vs. Civil Majority of IP enforcement actions in U.S. is civil not criminal Burden of proof is more difficult in criminal cases Higher thresholds for liability in criminal cases Criminal remedies can include prison term Factors evaluating whether to charge criminally: –Organized crime involvement –Public health and safety concerns –Commercial nature –Amount of loss and harm

39 Enforcement of Intellectual Property: Administrative Enforcing IP Through the Administrative System: –U.S. Customs and Border Protection: Protects federally registered copyrights and trademarks that are recorded Detention, Seizure and Forfeiture of Merchandise Right to act on its own (ex officio authority) –U.S. Patent and Trademark Office: Patent reexamination Trademark opposition proceedings

40 Enforcement of Intellectual Property: Administrative U.S. Customs Recordation Procedure: –Trademarks are recorded for a term of years to run concurrently with the underlying registration. –Copyrights are recorded for 20 years, unless the copyright registration expires before that time. –At any time, owners may provide U.S. Customs with information on suspected infringers: Manufacturers, country of origin, entry port, suspected dates, etc.

41 Enforcement of Intellectual Property: Administrative Trademark/Copyright Recordation Application –Available at: Verifying the recordation of your registration with U.S. Customs –Intellectual Property Rights Search (IPRS) https://iprs.cbp.gov/help.asp

42 Enforcement of Intellectual Property: Administrative

43 Protecting and Enforcing Your Intellectual Property Rights Abroad World Trade Organization –Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement: Sets the minimum standards for IP protection for Member Countries. IP laws are established and enforced by each individual Member Country. Most countries have analogs to the IP protection/enforcement procedures in the U.S.

44 Protecting and Enforcing Your Intellectual Property Rights Abroad Office of the U.S. Trade Representative –Special 301 Process Procedure used to identify countries that deny adequate protection for intellectual property rights. Countries may be placed on the Watch List depending on level of IP protection. May be subject to sanctions. Review conducted each year.

45 Protecting and Enforcing Your Intellectual Property Rights Abroad Seek local support to protect your IP –Contact the local trade associations for your industry –Contact local American Chamber of Commerce –Contact local officials who enforce IP Hire a lawyer in the foreign market –Should work jointly with your U.S. lawyer providing local expertise –Protect and enforce IP based on local law

46 Strategy Targeting Organized Piracy (STOP!) Initiative Most comprehensive initiative ever advanced to combat piracy and counterfeiting. Dismantle criminal enterprises that steal IP. Help companies establish their rights in the U.S. and abroad. Reach out to our trading partners and build an international coalition to block fake goods. Maintains a telephone hotline to contact and IPR legal expert: HALT

47 Conference on Intellectual Property in the Global Marketplace Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad Dorian Mazurkevich Attorney-Advisor


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