Protect Intellectual Property in International Business


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Strategies for protecting IP assets (trademarks, copyrights, trade secrets, and patents) in international business transactions.

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Protect Intellectual Property in International Business

  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 US3
  4. 4. The Problem with International IP Protection – Protecting US-created IP abroad continues to be a huge issue for American companies. – Counterfeiting is a multi-billion dollar annual industry4
  5. 5. Protecting IP Assets: I.S.E. Three Phases1. Identify2. Secure3. Enforce
  6. 6. Identify IP Assets• Trademark• Copyright• Patent• Trade Secrets
  7. 7. Types of IP  Trademarks – “first to file” vs. “first to use” jurisdictions  Situations that might give rise to legal issues for a typical company include: • Formation of new company or spin-off • New products/marketing campaign • Enter new markets (incl. overseas) • Notice a similar mark used by other company • Merger/Acquisition or Financing7
  8. 8. Types of IPCopyright- Under Berne Convention, this is the one type of US IP right that gets automatic protection in other countries Situations that might give rise to legal issues for a typical company include: • Creation of web site • Hire software company to develop computer program • Create training materials/PPTs • Advertisements • Develop newsletter or fact sheets to distribute to clients/post on web, etc.8
  9. 9. Types of IPPatents- Situations that might give rise to legal issues for a typical company include:• Company invents a new product or software application• Company develops a new business method• Start-up wants to raise money by pitching its new invention/method to potential investors• Learn of a competitor’s use of a patented product• Merger/Acquisition or Financing 9
  10. 10. Types of IPTrade Secrets- not “publicly available”Situations that might give rise to issues work for a typical company include:• Same as “Patent” Issues, plus• Hire new employees or get new partner• Learn that former Employee sent company materials to new employer while still working for company10
  11. 11. Securing IP Rights - Directly -NDA’s/Confidentiality Agreements -Partner/JV Agreements -Assignments/Transfers -“Work for Hire” and development agreements11
  12. 12. Securing IP Rights - Indirectly -In the United States -TM, SM, trade dress – USPTO -Patents – USPTO - Copyrights – US Library of Congress -International -Treaties (PCT, Madrid, etc.) -Foreign Gov’ts/Laws12
  13. 13. Enforcing IP Rights  Investigating claims/potential infringement  Drafting letters of inquiry & “Cease & desist” letters  Negotiating settlements & consent agreements  Prosecuting & defending infringement lawsuits13
  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.• Trade names, which cannot be registered at the Patent and Trademark Office, take longer to be recorded with Customs.
  15. 15. Stop IP-infringing ImportsTrademarks, 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. 16. 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. 17. Concluding Thoughts Every com pany has IP assets – though m any d on’t ad equately protect theirs. To protect IP assets, com panies m ust Id entify, Secure & Enforce IP rights in US and abroad . A “Proactive” strategy with regard to IP assets is generally m uch less expensive than a “Reactive” strategy17
  18. 18. About CHESTER PLLC J.F. (Jim) Chester, JD/LL.M, Managing Attorney 877-34-WORLD (TOLL FREE) 214-988-9248Advise entrepreneurs, start-ups, privately held companies with trademarks, copyrights, trade secret protection, licensing & enforcement and assist companies in commercial transactions in the U.S. and abroad