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C T Protect Ip At Border


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Presentation made for Int\'l Section CLE at Texas Bar Annual meeting 2009. Covers means of protecting & enforcing IP in US and abroad

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C T Protect Ip At Border

  1. 1. Protecting Intellectual Property Rights in International Trade J. F. (Jim) Chester, JD/LL.M Cowles & Thompson, PC Dallas - Tyler 1
  2. 2. Why does IP matter? 2
  3. 3. Top IP “Myths” Only large “high-tech” companies have IP - EVERY business has IP Assets. - A significant amount of innovation comes from individual inventors & SME’s Securing your IP rights in the US will give you protection in other countries, as well In most cases, US IP rights mean nothing outside US 3
  4. 4. International IP Protection – Protecting US-created IP abroad continues to be a huge issue for American companies. – Counterfeiting is a multi-billion dollar annual industry 4
  5. 5. IP Rights Protection Involves Three Phases 1. Identify 2. Secure 3. Enforce 5
  6. 6. Identify IP Rights • Trademark • Copyright • Patent • Trade Secrets 6
  7. 7. Types of IP ► Trademarks  Any name, symbol, figure, letter, word, or mark adopted and used by a business to designate its goods/services and to distinguish them from those of others  Includes service marks, certification marks  Also Trade Dress - Identifies the source or good by: ► Packaging ► Total image of a product ► Look and feel of business 7
  8. 8. Types of IP Copyright- exclusive right to make copies, license, and otherwise exploit a literary, musical, or artistic work, whether printed, audio, video, etc - Can last 100+ years - Under Berne Convention, this is the one type of US IP right that gets automatic protection in other countries - Don’t need registration, but registration gives additional rights/benefits 8
  9. 9. Types of IP Patents- the exclusive right to an inventor to manufacture, use, or sell an invention. - Can only come from the US govt. - Must meet statutory requirements novel, useful, non-obvious, etc. - Expire after 20 years after filing – NO renewal ► (Design patents – 14yrs. From issue of patent) 9
  10. 10. Types of IP Trade Secrets- Secrets secrets kept from the world by that relate to how to manufacture, use, or sell something (i.e., give a competitive advantage) - No registration required - Does not expire - Must be protected (e.g., limit access, NDA, etc.) 10
  11. 11. Securing IP Rights - Directly -NDA’s/Confidentiality Agreements -Partner/JV Agreements -Assignments/Transfers -“Work for Hire” and development agreements 11
  12. 12. Securing IP Rights - Indirectly -In the Unite d S tate s -TM, S M, trade dre s s – US PTO -Pate nts – US PTO - Co pyrig hts – US Library o f Co ng re s s -Inte rnatio nal -WIPO (Pate nt); Madrid Pro to c o l (TMs ) -Fo re ig n Go v ’ts 12
  13. 13. Enforcing IP Rights ► Investigating claims/potential infringement ► Drafting letters of inquiry & “Cease & desist” letters ► Negotiating settlements & consent agreements ► Prosecuting & defending infringement lawsuits 13
  14. 14. Stop IP-infringing Imports • Because of its border control responsibilities, the U.S. Customs & Border Protection (“Customs”) is uniquely positioned to prevent these illegal importations. • To be eligible for recordation with Customs, • trademarks must first be registered with the Principal Register in the U.S. Patent and Trademark Office (USPTO), • copyrights with the U.S. Copyright Office of the Library of Congress. • Registered works can be recorded via Intellectual Property Rights e-Recordation (IPRR) online system. 14
  15. 15. Stop IP-infringing Imports Trademarks, Trade Names and Copyrights • Trade names, which cannot be registered at the Patent and Trademark Office, take longer to be recorded with Customs. • Notice of tentative recordation must first be published in the Federal Register and in the Customs Bulletin, after which interested parties have the opportunity to oppose the recordation. 15
  16. 16. Stop IP-infringing Imports Trademarks, Trade Names and Copyrights • Once a trademark, trade name, or copyright has been recorded, Customs has the authority to deny entry to or seize goods that infringe upon the recorded right. • Domestic value of goods seized for IPR violations in FY2008 increased by 38.6 % to $272.7 million from $196.7 million in FY 2007. • IPR seizures of products posing potential safety and security risks increased by more than 124%, from $27.8 million to $62.5 million. • China was the top source country for IPR seizures of infringing products in FY 2008, accounting for 81% of the total domestic value seized. Footwear was the top commodity seized, accounting for 38% of the total domestic value. 16
  17. 17. Stop IP-infringing Imports Patents • Customs’ authority to help patent owners protect their rights is limited by law – and practicality. • Customs does enforce exclusion orders issued by the International Trade Commission under Section 337 of the Tariff Act of 1930. • Exclusion orders are issued where the Commission determines that Section 337 has been violated through unlawful, unfair methods of competition or unfair acts involving the importation of goods. • Once Customs receives a seizure-and-forfeiture order from the ITC, the goods would be subject to seizure. 17
  18. 18. Concluding Thoughts Every company has IP assets –though many don’adequately protect theirs. t A“ Proactive” strategy w regard to IP assets ith is generally much less expensive than a “Reactive” strategy 18
  19. 19. Questions? Em jchester@ cow ail Direct 214.672.2114 Toll Free 1.877.34.World 19