Presentation on theme: "U.S. Patent and Trademark Office"— Presentation transcript:
1U.S. Patent and Trademark Office Conference on Intellectual Property in the Global MarketplaceChecklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and AbroadDorian MazurkevichAttorney-AdvisorOffice of EnforcementU.S. Patent and Trademark Office
2Protecting and Enforcing Your Intellectual Property Rights How to protect your intellectual property rights?Strategic and Operational MeasuresTips to prevent the theft of your intellectual property before it happens.How to enforce your intellectual property rights?Legal MeasuresAvailable options if your intellectual property is stolen.How to protect your IPR?Strategic and Operational Measures To Prevent the TheftTips to prevent the theft of your intellectual property before it happens(Contracts with employees, conducting due diligence before transaction, etc.)How to enforce your IPR?Legal Measures To Remedy TheftUnderstanding options if your intellectual property is stolen
3Protecting Your Intellectual Property Rights What exactly am I protecting?What do I do to protect the intellectual property that I have identified?Two steps in protecting your IP rights-Identify the IPImplement measures to protect
4Protecting your Intellectual Property What am I protecting?Determine what intellectual property your business has by conducting an “Internal IP Audit” to identify:CopyrightsTrademarksPatentsTrade SecretsIn order to protect your company’s IP, you first need to determine what exactly you have to protect.Yesterday, learned of the different forms of IP.Go through your business and evaluate everything to determine if its protectible
5Protecting your Intellectual Property Conducting an Internal IP AuditTrademarks:Registered MarksBusiness NamesLogosSlogansDomain NamesProduct Packaging/ConfigurationWebsite DesignFirst- AssessmentWhat Trademarks do you own or Potentially have?Registered marks (domestic and foreign)Pending applicationsBusiness namesLogosSlogansDomain namesTrade Dress:Product packaging or configurationWebsite DesignRemember: Anything used to identify or distinguish the source of goods
6Protecting your Intellectual Property Conducting an Internal IP AuditCopyrights:Registered CopyrightsWritten MaterialsPhotographsIllustrationsComputer SoftwareMusic/FilmWebsite ContentNext- Evaluate your copyrightsDetermine what you have that you can copyrightCopyrights:Registered CopyrightsWritten MaterialsPhotographsIllustrationsComputer SoftwareMusic/FilmWebsite Content
7Protecting your Intellectual Property Conducting an Internal IP AuditPatents:Issued PatentsPending ApplicationsMechanical DevicesElectronic DevicesMedicine/Medical DevicesChemical Composition/ProcessComputer-Based Business Process (Software)Next- What can you patentLook for potential patentable items:e.g.Mechanical DeviceChemical Composition/ProcessComputer-Based Business Process (aka Business method patents or software patent)Generally, there are three broad categories of patentable subject matter: processes, machines and articles of manufacture and use.A process could be a method for making something, a method for using something, or a method for doing something. Processes include business methods, most software, medical techniques, Machines include devices and apparatuses. Articles of manufacture include mechanical devices, electrical/electronic devices and compositions of matter such as chemicals, medicines, biotech.
8Protecting your Intellectual Property Conducting an Internal IP AuditTrade 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.”Next, determine if there are any Trade SecretsMost business probably already have some that are protectableMost common form of IP for a businessesHere’s a definition provided by Uniform Trade Secrets Act-(definition adopted by 44 states)(READ DEFINITION)Other simpler definition"A trade secret may consist of any formula, pattern, device or compilation of information which is used in one’s business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.” Restatement of Torts, § 757 comment (b) (1939).
9Protecting your Intellectual Property Trade Secret Factors:Known outside of your business?Known by those inside your business?Measures to guard secrecy?Value of the information?Effort/cost in developing?Easy to duplicate?Courts often look to the certain factors to determinewhether a given idea or information constitutes a trade secret:1. the extent to which it is known outside of the business;2. the extent to which it is known by employees and others involved in the business;3. the extent of measures taken by the owner to guard the secrecy of the information;4. the value of the information to the business and to its competitors;5. the amount of effort or money expended in developing the information6. the ease or difficulty with which the information could properly be duplicated byothers.
10Protecting your Intellectual Property Trade Secret Factors:Maintaining SecrecyLimit DistributionMark “Confidential”Secure Facilities and FilesEnact Policies and ProceduresContracts with Employees and 3rd PartiesWith Trade Secrets the factor that is most within control of business owner- Maintaining SecrecyOverview briefly Some steps to considerLimit DistributionMark “Confidential”Secure Facilities and FilesEnact Policies and ProceduresContracts with Employees and 3rd PartiesWill discuss in detail when I outline steps you can take to safeguard your IP
11Protecting your Intellectual Property Conducting an Internal IP AuditTrade Secrets:Customer ListsPricing/Cost DataCustomer Information and Sales PracticesBusiness PlansFinancial Data/ForecastsManufacturing TechniquesDesign ManualsProduction Processes/SpecificationsSurvey/Research Data (including negative R&D)Next step in the Audit is examine business what trade secrets you have to protectFor example-Customer ListsPricing/Cost DataCustomer Information and Sales PracticesBusiness PlansFinancial Data/ForecastsManufacturing TechniquesDesign ManualsProduction Processes/SpecificationsSurvey/Research Data (including negative R&D)Anything that that you have that if your competitor found out would give him an advantage
12Protecting your Intellectual Property What am I protecting?Identify the IP in your business:CopyrightsTrademarksPatentsTrade SecretsCan be a mixture of IP for single product.When you identify the IP in your businessyou may be multiple forms for single productFor example-software may protect by patent and/or copyrightnew product may havepatent for mechanics of the product,trade dress for the packagingdesign patent for outside of the product,TM for the namecopyright for users manualtrade secret for the customer list.
13Protecting your Intellectual Property Prioritize your IP:Cost vs. BenefitOffensive vs. Defensive ValueImplement measures to protect the IP that you have identified:Internal (inside your business)External (dealing with 3rd parties)Once you have identified it-Prioritize IP to be pursued and protectedThose that provide real competitive advantageThose have defensive value for cross-licensingThose that enhance asset base of businessEvaluate benefits of protection vs. costs in getting protection.Once identified and determined what’s important, you can focus on protecting the IP2 ways-Internally (how you operate your business)Externally (how you deal with outside parties)
14Protecting your Intellectual Property Internal Measures to Safeguard your IPRegister IPPay maintenance and renewal feesConfirm you own the IPTake steps to secure your confidential informationWhen Protecting Your IP1. REGISTER YOUR IPRegister your trademark with USPTOFile application for patent protection with USPTOmaybe only a provisional patent applications (to lock in date of invention)Register your copyrights with the U.S. Copyright Office at the Library of CongressRegister with Customs (discuss later as part of administrative enforcement)2. PAY FEESPay Maintenance fees and renewal fees, esp. for domain namesCONFIRM YOU OWN THE IPReview licenses, any contractual assignments,Have employees (or other parties) signed over the rights if they were involved making the IP?4. Take steps to keep your confidential information secretTrade secrets- only recognized if you keep them secret
15Protecting your Intellectual Property Trade Secret ProtectionCompany 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.How to Protect trade secrets -Implement protective measures-Company policies and Employee Policies are very importantFor Sensitive information be careful about:Protection – physically secure the informationMarking – “confidential” – everyone on notice that it is valuable informationStorage – limit distributionTransmission – be careful on how easilyDestruction – shred and make sure documents are returnedDon’t implement protective measures jeopardized your trade secrets
16Protecting your Intellectual Property Trade Secret ProtectionEmployee Policies:Non-Disclosure AgreementNon-Compete AgreementIP AssignmentEmployee 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 InterviewHow to Protect trade secrets -Implement protective Employee PoliciesHave all new employees enter into contracts to protect your interests:1. Non-Disclosure Agreement aka Confidentiality Agreementcontracts between two or more parties where the subject of the agreement is a promise that information conveyed will be maintained in secrecy. Trade secrets- only recognized if you keep them secret2. Non-Compete Agreementemployees must agree not to work for a direct competitor for a certain amount of time after leaving your company. Rule of reason (i.e. 1 year, check jurisdiction California has state laws that heavily restrict, and in some cases, completely bar noncompete agreements.IP Assignment– stating IP developed is owned by company(Employee Manual) Enact policy regarding treatment of confidential informationExplains-1. Marking things confidential, limiting distribution, using passwords…2. When employees can make speeches and publications, implement a review process for trade secrets3. Procedure for submission of ideas and new patentsFOR DEPARTEING EMPLOYEES- Conduct an Exit interviews-Return and account for all confidential information.Provide them copy of their NDA or non-competeRemind them of their obligations –Have them execute an “Acknowledgement” a document where that recognize their continuing obligationsMake sure exit process is uniform (1 person in HR do it).OTHER POLICIES-Cultivate an awareness of IP among employeesScreen new employees for high ethical standardsTrain employees and managers on safeguarding IP
17Protecting your Intellectual Property External Measures to Safeguard IPImportant with any business transaction with 3rd parties involving IP:AcquisitionMergerLicensingJoint-VentureSaleFor many companies, the way they acquire their IP is through a 3rd party transaction.In addition to Internal Controls you need External ControlsImportant with any business transaction with 3rd parties involving IP:Transaction can be:AcquisitionMergerLicensingJoint-VentureSaleOut-sourcing
18Protecting your Intellectual Property External Measures to Safeguard IPConduct Due Diligence of 3rd Party:Assess the 3rd PartyIdentify the IPReview Underlying Documents (e.g. assignments, licenses, registrations, applications)Verify Ownership/Proper Chain of TitleLawsuits/Threatened ClaimsTransactional Due Diligence- (obvious questions, but must be methodical)Examine the 3rd party – whether its partners, vendors, outside contractors, licensor.Want to know with whom your dealingDon’t share tech. and business secrets too readily- find out the polices they have to protect IP (ex. confirm NDAs are in place).Identify the IPWhat is it?– Do they/ have authority to buy/sell/license the IP?Identify IP OwnerAre their proper assignments agreements? …with proper consideration … exclusive or non-exclusive…Carefully review Esp. in start-ups(ex. Employee invents something, company assumes it is theirs, files for patent, wants to license it… did employee sign a contract signing over invention?)That’s why IP Assignments very important when hire new employeesAny 3rd Party claims? Threats of lawsuits?WHY DO ALL THIS?
19Protecting your Intellectual Property External Measures to Safeguard IPConduct IP Review of Transaction:Confidentiality /Non-Disclosure AgreementExclusivityTerritorialityField of useQuality controlInspections/AuditsIndemnification ClauseExternal Measures to Safeguard IPBefore you enter into the transaction and reveal anything valuable-Enter into Confidentiality AgreementProtects your information in case deal doesn’t go throughConduct IP Review of Transaction: Assess the Transaction-If it’s a licensing agreement- is itExclusive or non-exclusive?Can you sublicense?What the scope?What territory?What time frame?What field of use?How will you make sure your IP is protected by the licensor?Indemnification Clause in K- in case you get sued because the licensor didn’t really own the IP or because it may infringe some other IPThese are things to consider when entering into any IP transaction.
20Protecting your Intellectual Property External Measures to Safeguard IPPolice your IP:Review marketMonitor competitor’s filingsRisk assessmentMonitor internal controlsEnforce your IP: Take legal action when necessary.Constantly Police your IPPeriodic review of market in key areasHave employee reports on new developmentsReview competitors’ filings and registrationsMonitor internal controls to maintain secrecy safeguards.If infringement noticed. Take action, otherwise you risk waiver,or barred by statute of limitations,or court may consider consented.
21Protecting and Enforcing Your Intellectual Property Rights How to enforce your IP?Legal Options:CivilCriminalAdministrativeHow to enforce your IPR?Legal Options To Remedy Theft:CivilCriminalAdministrative
22Enforcing Your Intellectual Property Rights Legal Measures to Enforce your IP:Civil SystemState and FederalAlternative Dispute Resolution (ADR)Criminal SystemU.S. Department of JusticeAdministrative SystemU.S. Customs (Border Enforcement)U.S. Patent & Trademark OfficeOutlines the Legal options - if your intellectual property is stolenCivil SystemFile Lawsuit in State or Federal CourtConsider Alternative Dispute Resolution (ADR)Criminal System – Have criminal proceedings broughtU.S. Department of JusticeAdministrative System – Seek administrative assistanceU.S. Customs (Border Enforcement)U.S. Patent & Trademark Office
23Enforcing Your Intellectual Property Rights Enforcing IP Through the Civil Court System:Determine Whether Your IP Has Been Taken or CopiedInfringement DeterminationSend Cease and Desist LetterNegotiate or Enter into Licensing AgreementFile ClaimState or Federal CourtADREnforcing IP Through the Civil Court System:First must Determine Whether Your IP Has Been Taken or CopiedNeed to make an infringement determination or if its trade secret whether its been misappropriatedDiscuss Later in detail on the elements of infringementSend Cease and Desist LetterIf Infringed, Negotiate or Enter into Licensing AgreementFile Claim By Court System or ADR (such as mediation or arbitration)IP Litigation gets expensive very quickly, so considering ADR or entering into licensing agreement are important options
24Enforcing Your Intellectual Property Rights Patent Infringement: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.Has Your IP Been Infringed?With regards to patents, it is a two-step analysis.For Patent Infringement, first the Judge makes a legal determination to determine the meaning and scope of the claims in the patent.At this stage both parties can use evidence to prove their interpretation:Expert witnesses, documents related to history of the patent, the terms of the patent itself.For step two, the Jury (using the judges determination of what the claims mean) will determine infringement, by Comparison of the properly construed claims to the accused device.You will notice there is no new to prove willful copying. That fact may be important later when damages are determined but for infringement it is not relevant.
25Enforcing Your Intellectual Property Rights Patent Infringement Defenses:No InfringementPatent InvalidityLachesInequitable ConductPatent MisuseExperimental UseIf accused of patent infringement, there are a number of defenses, the main ones are:That there was no infringementThe patent is invalid(which means- You should never have gotten the patent in the first place because of prior art that exists or some other reason.30-50% of all litigated patents are held to be invalid. Thus, there is risk involved in bringing a case with one of your patentsInequitable conduct. That is some misrepresentations or failure to disclose information during the patent application processLaches – an unreasonable or inexcusable delay in bringing the infringement action5. Patent Misuse and Experimental use
26Enforcing Your Intellectual Property Rights Trademark InfringementIs there a “likelihood of confusion” from the perspective of the reasonable prudent purchaser?Strength of the plaintiff’s trademarkSimilarity between the trademarksProximity of the products in the marketplaceLikelihood that the prior owner will bridge the gapEvidence of actual confusionDefendant’s good faith in adopting the markQuality of the defendant’s productCare and sophistication of the buyersTrademark Infringement – Question to ask is---Is there a “likelihood of confusion” from the perspective of the reasonable prudent purchaser?Courts use some of the following factors to determine:Strength of the plaintiff’s trademarkSimilarity between the trademarksProximity of the products in the marketplaceLikelihood that the prior owner will bridge the gapEvidence of actual confusionDefendant’s good faith in adopting the markQuality of the defendant’s productCare and sophistication of the buyers.
27Enforcing Your Intellectual Property Rights Trademark Infringement Defenses:No InfringementAbandonmentLachesFraudulent RegistrationAcquiescenceNominative Use (Comparative Advertising)ParodyIf accused of trademark infringement, there are a number of defenses, the main ones are:No InfringementAbandonmentLachesFraudulent RegistrationAcquiescenceNominative Use (Comparative Advertising)use only to reasonably identify the mark and user does not suggest sponsorship or endorsement by the trademark holderParody – technically, this would be found as non-infringement in that if a true parody it would not create the necessary likelihood of confusion
28Enforcing Your Intellectual Property Rights Copyright InfringementProof of Access to the Work“Substantial Similarity”Vicarious Copyright InfringementCopyright infringement by someone elseAbility to control and financial benefitContributory Copyright InfringementKnowledge and substantial participationWhat is Copyright Infringement?A copyright is violated when someone copies, distributes, performs or displays all or part of a copyright work without the permission of the copyright owner.How to prove:2 factors: Access and Substantial SimilarityInverse Ratio, In that the More Substantial Similarity the less proof of Access that you need.Notice: If two people create the same thing w/o copying, there is no infringement.Unlike patents and trademark, you have to show that you copied.Vicarious Infringement - infringement by someone elseAbility to control and financial benefitContributory Infringement- infringement by someone elseKnowledge and substantial participation
29Enforcing Your Intellectual Property Rights Copyright Infringement DefensesNon-infringement/Independent creationInequitable conductLachesFair use:Type of use (commercial, nonprofit, or educational)Nature of work (factual or creative)Amount takenMarket effectThe Defenses to Copyright Infringement are primarily---No infringement (such as b/c of independent creation)Inequitable conductLachesFair use: Use following factors to determine:the purpose and character of the copying (certain types of educational copying is allowed)the nature of the original (originals made for commercial reasons are less protected from copying than their purely artistic counterparts)the amount and substantiality of the portion copied (one may not copy the "heart" of a work without the author's permission); andthe effect that such copying may have on the market for the original (copying may be permitted if it is unlikely to cause economic harm the original author).Other defenses: no infringement, laches
30Enforcing Your Intellectual Property Rights Misappropriation of Trade SecretAcquisition of a trade secret of another by “improper means,” such as:TheftBriberyMisrepresentationbreach of duty to maintain secrecyInducement of a breach of duty to maintain secrecyEspionage through electronic or other meansHow do you determine if you trade secrets have been stolen (called misappropriated)?Under the Uniform Trade Secrets Act, the standard is taking a trade secret by “IMPROPER MEANS.”The Uniform Trade Secrets Act defines "improper means" to include "theft, bribery, misrepresentation, breach or inducement of a breach of duty to maintain secrecy, or espionage through electronic or other means."Trade Secrets are governed by state law, so remember the law varies by state.
31Enforcing Your Intellectual Property Rights Misappropriation of Trade Secret Defenses:Not a Trade Secret:Secrecy Not MaintainedInformation Publicly AvailableReverse EngineeringDefenses to Misappropriation of Trade Secret include that:There was no Trade Secret:Because it was not kept secret enoughOr the information publicly availableReverse EngineeringThe other party was able to figure out the trade secret independently
32Enforcing Your Intellectual Property Rights Infringement / Misappropriation Remedies:InjunctionDamages“Reasonable Royalty”Lost profitsFor patents, if willful infringement: 3x damages assessed and/or attorneys’ feesFor copyrights, can elect to get statutory damagesPre/Post-Judgment InterestOnce Infringement or misappropriation has been found the Court can provide the following remedies:Injunction, may be preliminary if sought early on or permanentMonetary damages (reasonable royalty or lost profits – to compensate for any damages suffered)Can get pre and post-judgment interest.And in some case depending on the facts Attorney’s Fees (meaning the costs you incurred in bringing suit)For Patent infrg. can get treble damages if willful infringement is foundFor copyright infring., instead of actual damages and lost profits for copyright can get statutory damages$750-30,000 as determined by the court.
33Enforcing Your Intellectual Property Rights If You Determine Your IP Has Been Infringed?Cease and Desist LetterProvides notice that infringement has occurredIn patent case, other party may file a Declaratory Judgment ActionNegotiate / Enter into Licensing AgreementFile LawsuitLitigation is costlyIP can be found to be invalidAlternative Dispute Resolution (ADR)If You Determine Your IP Has been stolen, what next steps do you take?Send out a Cease and Desist LetterProvides notice that infringement has occurredAsk that infringement stop, threatens lawsuitContact other party and Negotiate/ Enter into Licensing AgreementFile LawsuitLitigation is costlyIP can be found to be invalid by a courtConsider ADR (arbitration)- confidential, cheaper, quicker, patent invalidity issue.
34Enforcing Your Intellectual Property Rights Civil Court System:Federal CourtsCopyrightsTrademarksPatentsState CourtsTrade SecretsIn case a claim of infringement is filed you should understand the court system and where the case will be handled:US is a federal system, where authority divided between the federal government and the statesWith IP, the federal government and its courts overseeCopyrights,TrademarksPatents (some jurisdictions, where a lot of high tech such as E. D. of VA and N.D. CA, have adopted specialized rules for patent case, proceed quickly 6-8 months, called rocket docket b/c of quick resolution)The State courts hear claims related to Trade secrets / State and common law trademarksBecause trade secrets governed by State law you have 50 different laws, althoughMost have adopted the Uniform Trade Secrets Act, many have variations, so with trade secrets it important of be aware of the requirements of your state.
35Enforcing Your Intellectual Property Rights Alternative Dispute Resolution (ADR):ArbitrationNeutral 3rd Party Makes Binding RulingAdversarialMediationNeutral 3rd Party Facilitates ResolutionNon-adversarialBenefitsSpeed, Economy, Confidential, Select Venue, Select RulesInstead of Litigation may consider - Alternative Dispute Resolution (ADR):ArbitrationNeutral 3rd Party Makes Binding Ruling (recognized and enforced by Courts)AdversarialMediationNeutral 3rd Party Facilitates ResolutionNon-adversarialBenefitsSpeed, Economy, Confidential, Select Venue, Select Rules(patent invalidity issue).Given its benefits, consider placing a Arbitration clause in your IP Agreements:“All disputes arising out of or relating to the present contract shall be finally settled by Arbitration…."
36Enforcement of Intellectual Property: Criminal Enforcing IP Through the Criminal System:U.S. Department of JusticeCriminal Division: Computer Crime & Intellectual Property Section (CCIPS)U.S. Attorney’s Office: Computer Hacking and Intellectual Property Units (CHIPS)Federal Bureau of InvestigationU.S. Immigration & Customs Enforcement (ICE)The National Intellectual Property Rights Coordination Center (IPR Center)Online IP complaint form at:Now we will consider Criminal System to Enforce your IPUS DOJ does criminal prosecution and investigation of IP related-crimes.Criminal Division: Computer Crime & Intellectual Property Section - prosecutorU.S. Attorney’s Office: Computer Hacking and Intellectual Property Units (CHIPS) – prosecutorsSpecialized CHIPS units in CA, FLA, MO, NJ, NY, PA, TX, VA, WAFBI – investigatorsUS Immigration & Customs EnforcementThe National Intellectual Property Rights Coordination Center (IPR Center)IPR Center- multi-agency Center responsible for coordinating a unified U.S. Government response regarding IPR enforcement issuesThey have an online form you can inform them of piracy and counterfeiting you may know of.
37Enforcement 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)Many criminal laws in place to enforce intellectual property.Here is a list of some of these laws.
38Enforcement of Intellectual Property: Criminal vs. Civil Majority of IP enforcement actions in U.S. is civil not criminalBurden of proof is more difficult in criminal casesHigher thresholds for liability in criminal casesCriminal remedies can include prison termFactors evaluating whether to charge criminally:Organized crime involvementPublic health and safety concernsCommercial natureAmount of loss and harmBriefly Compare Civil vs. Criminal Enforcement of IPMajority of IP enforcement actions in U.S. are civil not criminalBurden of proof is more difficult in criminal casesHigher thresholds for liability in criminal casesbeyond reasonable doubt and willful (criminal) –preponderance of evidence (civil)Higher thresholds-felony copyright infringement more at least 10 copies valued at at least $2.5K w/in 180 days. (crim)civil infringement (no minimums)Criminal remedies can include prison termFactors evaluating whether to charge criminally:Organized crime involvementPublic health and safety concernsCommercial natureAmount of loss and harm
39Enforcement of Intellectual Property: Administrative Enforcing IP Through the Administrative System:U.S. Customs and Border Protection:Protects federally registered copyrights and trademarks that are recordedDetention, Seizure and Forfeiture of MerchandiseRight to act on its own (ex officio authority)U.S. Patent and Trademark Office:Patent reexaminationTrademark opposition proceedingsNext look to how your can enforce your IP by the US Administrative SystemU.S. Customs SystemProvides protection for federally registered copyrights and trademarks that are also recorded with U.S. Customs. (separate from registering with PTO or Copyright Office)Patent not really covered because would have to make patent infringement analysis (scope of claims, etc.)Involved in the Detention, Seizure and Forfeiture of Fake MerchandiseRight to act on its own called Ex officio authority – random examinations, warehouse sweepsAlso, enforces exclusion orders issued by US International Trade Commission resulting from unfair import investigations.US Patent and Trademark OfficeConduct Re-examination of patents that a 3rd party may challengeAlso, conduct trademark opposition proceedings when a 3rd party challenges the issuance of a trademark.
40Enforcement 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.Look at How U.S. Customs Recordation System Works:To enable US Customs to monitor your IP you mustRecord your registered trademarks and copyrights with them: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:manufacturer, country of origin, entry ports, suspected dates, any other information they may have.Once you record your IP, US Customs puts your info into their databaseThe information in database available at all ports of entry.Customs can then seize infringing goods, and can start administrative proceedings against seized goods.
41Enforcement of Intellectual Property: Administrative Trademark/Copyright Recordation ApplicationAvailable at:Verifying the recordation of your registration with U.S. CustomsIntellectual Property Rights Search (IPRS)https://iprs.cbp.gov/help.aspThe U.S. Customs Trademark/Copyright Recordation Applicationform is available on internet site:On it you must provide:1. pay recordation fee of $190 each2. Provide information on IPregistering agency, reg. #, exp. dateWhat goods/ mark coveredIP owner name and contactplace manufactureauthorized users/ licenseesenforcement info.Must provide certifying copy of tm/c registration.You can verify the recordation of your registration with U.S. Customson the Intellectual Property Rights Search (IPRS) systemIPRS searchable database contains public version of IPR registrations.Almost 30,000 records to search going 1945.
42Enforcement of Intellectual Property: Administrative This is a screen shot of the U.S. Customs Website.Here you can search what marks have been registered, and also download an Application form to register your own copyrights and trademarks.
43Protecting and Enforcing Your Intellectual Property Rights Abroad World Trade OrganizationTrade-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.We have looked how to protect and enforce your IP in the USNow like to consider international issues.First you should be aware of the World Trade Organizationand theTrade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement:TRIPS 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.
44Protecting and Enforcing Your Intellectual Property Rights Abroad Office of the U.S. Trade Representative“Special 301” ProcessProcedure 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.Next, if considering to distribute your IP abroad also be aware of theOffice of the U.S.Trade Representative“Special 301”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.
45Protecting and Enforcing Your Intellectual Property Rights Abroad Seek local support to protect your IPContact the local trade associations for your industryContact local American Chamber of CommerceContact local officials who enforce IPHire a lawyer in the foreign marketShould work jointly with your U.S. lawyer providing local expertiseProtect and enforce IP based on local lawWhen entering a Foreign Market you should:Determine the IP climate and seek local support to protect your IPContact the local trade associations for your industryContact local American Chamber of CommerceContact local officials who enforce IPHire a lawyer in the foreign marketShould work jointly with your U.S. lawyer providing local expertiseTake steps to protect and enforce your IP, based on local lawUnder TRIPS we are seeing some of the same procedures such a the Customs and Border Enforcement issues I discussed.The tips I mentioned before on protection and enforcement in the U.S. are just as applicable and should be considered here.
46Strategy 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:HALTLastly I would like to remind everyone about the STOP initiative.Established in October 2004It is the most comprehensive initiative ever advanced to combat piracy and counterfeiting.It is designed to crack down on counterfeit and pirated goodsAnd also help small and mid-sized businesses in protecting their IP rightsWe maintain a telephone hotline at HALTwhere IP experts are available to answer any questions you may have related to IP enforcement issues.
47Dorian Mazurkevich Attorney-Advisor email@example.com Conference on Intellectual Property in the Global MarketplaceChecklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and AbroadI hope you have found this presentation helpful and I thank you for your time.Dorian MazurkevichAttorney-Advisor