Paradise Point Resort & Spa San Diego, CA October 19-21, 2011 Patenting Protein Therapeutics: In the Shadow of Uncertainty 4th Protein Discovery and Therapeutics Global Technology Community Klarquist Sparkman, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon February 11, 2013 Domestic and Foreign Intellectual Property Enforcement AKTI Counterfeiting Round Table Speaker: Jeffrey Haendler

Klarquist Sparkman, LLP Agenda Filing U.S. and foreign trademark applications. Enforcement strategies for China and websites. Filing U.S. and foreign patent applications. Patent types in China. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP What is a Trademark or Service Mark? A word, phrase, symbol, sound, color, smell, etc. that can identify the source of the goods or services Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Types of Trademark Rights Klarquist Sparkman, LLP ©2013 Common Law Marks US Federally Registered Marks (or based on pending applications to register a mark) State Registered Marks Foreign Priority Rights Foreign Registrations

Klarquist Sparkman, LLP Registered Marks Klarquist Sparkman, LLP ©2013 US Federal Use Applications for Registration – require actual use in interstate or foreign commerce Federal Intent-to-Use Application – require a bona fide intent to use the mark in interstate or foreign commerce State Registration – Most (e.g. Oregon, Washington) but not all (e.g. Vermont, Wisconsin) require actual use

Klarquist Sparkman, LLP Benefits of National Registration National Geographic Rights – Nationwide – so preserves registrant’s right to expand. – Provides constructive notice to 3 rd parties: bars defense of good faith subsequent adoption, BUT this does not mean that subsequent use is in bad faith – Third parties who acquired common law rights in a remote area before registrant applied cannot extend those rights after the application date. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Benefits of National Registration Nationwide Priority From Filing Date – Constructive use and priority against subsequent uses as of the filing date. – Third parties cannot acquire rights by commencing use after the filing date Prima Facie Evidence of Distinctiveness and Validity – Rebuttable presumption for first 5 years. “Incontestable” after 5 years. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Protecting Trademark Rights in Foreign Countries Most foreign countries do not recognize common law trademark rights (e.g., China) Most foreign countries require trademark registration to enforce trademark rights Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Types of Foreign TM Applications National application filed directly in foreign country Community Trade Mark application- covers EU Madrid Protocol (international) application – Single filing; pay fees for designated countries – Includes China, EU, Korea, Japan – Does not presently include Taiwan, Hong Kong, South Africa Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP When to File Foreign TM Applications Most foreign countries recognize filing date of U.S. application as effective filing date if foreign application filed within six months of U.S. application. For important trademarks, file foreign applications within six-month window Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Dealing with TM Applications Filed by Others Counterfeiters may file foreign application if owner does not file foreign application within six-month window Send cease and desist letter File TM opposition with foreign Trademark Office (usually a set time limit after application published) Need to show bad faith Going rate is about $10,000 to settle opposition in China File lawsuit (expensive) Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Enforcement in China Register trademark first Request local Administration for Industry and Commerce (AIC) to take enforcement action to seize goods (more common than lawsuits, but damages probably not available without lawsuit) Costs for investigating a target : $2,400-$3,200 Cost for sending cease and desist letter and some follow up: $1,600 or more if English translations are required Cost for requesting AIC to conduct a raid action: $4,000- $5,500. Additional attorney fees for ongoing advice. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Enforcement in China File lawsuit Cost for lawsuit: $24,000 and up Record registered trademark with General Administrations of Customs (GAC). GAC can seize counterfeit products declared for export. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Monitor Third Party Websites for Counterfeits Routinely monitor third party websites like Ebay, Amazon, Alibaba File take down notices Some may require proof of registered trademark (no common law rights) Work with foreign agent to file take down notices with foreign language websites Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Counterfeiter Websites Check to see if website is registered with U.S.-based registrar ( File take down notice or send cease and desist letter to registrar. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Utility Patents Protects process, machine, product, or composition of matter. Lasts 20 years from filing date. Foreign applications must be filed within 12 months of U.S. application to claim priority. PCT (international) application available; must be converted to national stage applications. Absolute novelty in foreign countries (file in U.S. before invention made public) Probably not cost effective strategy against counterfeiters. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Design Patents Design patent- the new, original, ornamental design, configuration, shape or outward ornamental appearance of a useful product. Lasts 14 from issue date. Much less expensive than utility patents. Examples: Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Design Patents in Foreign Countries Foreign applications must be filed within 6 months of U.S. application to claim priority. Novelty rules vary country to country- file U.S. application before invention made public. Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Patent Types in China Invention – equivalent to utility patent (20 years) Design (10 years) Utility model – no U.S. equivalent (10 years) Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP Chinese Utility Model No substantive examination until enforcement Available only to products with features of shape and structure Faster, cheaper to get Lower threshold on inventive step (non-obviousness) Difficult to be invalidated Same applicant, same day files utility model & invention application – allowed to abandon granted utility model and get patent for invention – extend time period during which enforceable right is available To enforce, evaluation report required from Patent Office Klarquist Sparkman, LLP ©2013

Klarquist Sparkman, LLP QUESTIONS? Jeffrey Haendler Klarquist Sparkman, LLP 121 SW Salmon Street, 16th Floor Portland, Oregon Phone: (503) Klarquist Sparkman, LLP ©2013