American Intellectual Property Law Association Presentation for China State Administration for Industry and Commerce Based on a Presentation by William

American Intellectual Property Law Association

Presentation forChina State Administration for Industry and Commerce

Based on a Presentation byWilliam S. Boshnick ofGreenblum & Bernstein, P.L.C

James E. RulandThe Law Office of James E. Ruland, P.L.CP.O. Box 392Falls Church, VA [email protected] 4, 2009

December 4, 2009

Overview of Organization of U.S. Law

Legislative Branch (U.S.C.)• Congress Makes the Laws

Executive Branch (C.F.R.)• President Executes the Laws

Judicial Branch

• Courts Interpret and Enforce the Laws

December 4, 2009

Overview of Organization of U.S. Law

Federal Court System• District Courts• Courts of Appeal• Supreme Court• Similar State Court Structure

Trade Secrets Rights of Publicity

Regulatory Agencies• United States Patent and Trademark Office (USPTO)• Library of Congress (Copyright Office)• International Trade Commission (ITC)

December 4, 2009

Intellectual Property

Intangible Property• Applied Ideas Patents• Fixed Works of Authorship Copyright• Commercial Sources Trademark

Patents专利

December 4, 2009

Patent Law

U.S. Government Grant• Right to exclude others• Not a right to do (or make) something• Not a Natural Right

Limited Right• In Time and Scope• Violation of Right is Infringement

December 4, 2009

Patent LawProvided in the United States Constitution

(est. 1787)

Congress has the power “to promote the progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Article 1, Section 8, Clause 8

December 4, 2009

Patentability of Invention

Useful: “Any new and useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof, may obtain a patent therefor…” (35 U.S.C. § 101)

New (35 U.S.C. § 102)

Nonobvious (35 U.S.C. § 103)

December 4, 2009

Unpatentable Subject Matter

Algorithms

Mental processes

Mathematical formulas

Phenomena of nature

Fundamental truths

December 4, 2009

Patent Application

An application is usually prepared by an attorney or agent who is admitted to practice before the United States Patent and Trademark Office (USPTO), but inventor may apply on his own (pro se).

Types of patents:

• Utility patent

• Design patent

• Plant

December 4, 2009

Prosecution

Average time from filing to first examination in PTO:

• 1.5 - 5 years (depending on the type and field of the application), sometimes longer

The delay in processing applications is expected to increase due to the huge application backlog in the PTO

December 4, 2009

Issuance

For utility applications filed on or after June 8, 1995, the patent term is generally 20 years from the filing date, or any earlier filing date claimed under 35 U.S.C. § 119

20 years

December 4, 2009

Enforcement

Patent claims define scope of invention

Right to exclude others

Notice by patent marking

Copyrights

©著作权

December 4, 2009

Copyright Law

1. Government Grant• Like Patent, Not a Natural Right• Constitution

2. Limited in;• Extent• Time

• Generally life of the author +70 years• Scope

December 4, 2009

Copyright: Laws and Rules

Constitution

Statutes – Title 17 United States Code

Rules – Title 37 Code of Federal Regulations §201

Federal Law

• Cases, Precedence

December 4, 2009

What is a Copyright?

Authors of “original works of authorship”Exclusive rights, 17 U.S.C. § 106• Reproduce Copies of Works• Prepare Derivative Works• Perform and Display Certain Works

Limitations, 17 U.S.C. §§ 107-121• Fair Use• Reproduction by Libraries• Reproduction for Blind and Disabled

December 4, 2009

What is a Copyright?

Must be fixed on a tangible medium

Original or independent authorship and…

Some minimal level of creativity

Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)

December 4, 2009

What Exclusive Rights are Given to Authors?

Right to Exclude Others• From protected expression• Not from idea or concept

Enumerated in 17 U.S.C. § 106

Limited by various compulsory licenses and exemptions in 17 U.S.C. §§ 107-121

December 4, 2009

Fair Use Limitation

17 U.S.C. § 107

Use does not infringe if for purposes of• Criticism• Comment• News reporting• Teaching• Scholarship• Research

December 4, 2009

Enforcement

Must Demonstrate1. Ownership of a valid copyright, and…

2. Copy of the original, whole or in substantial part

Direct Infringement• Direct Evidence

Admissions, secret codes copied

• Circumstantial evidence Access Substantial similarity

Trademarks

商标

December 4, 2009

Trademark Law

1. Commercial Right

2. Limited Right• Scope• Indefinite in duration if in continuous use

December 4, 2009

Public PolicyProtection of Commerce

Consumer• Prevent deception and confusion• Source of goods trusted

Manufacturer• Identification of their goods• Prevent diversion of customers

Competitors• Prevent undue monopolization of effective symbols

and signs

General Public• Reward producers of goods• Minimize consumer deception

December 4, 2009

Trademark: Laws and Rules

State Laws

Federal Statutes (15 U.S.C.)• Lanham Act• Antidilution

Rules

Guidelines• Trademark Manual Examination Procedure

December 4, 2009

What are Trademarks and Service Marks?

Trademark is any word, phrase, symbol or combination thereof which is used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured and sold by others.

Service Mark is any word, name, symbol or combination thereof which is used in the sale or advertising of services to identify the services and distinguish them from those of others.

December 4, 2009

Advantages of Promoting Trademarks

Attracts Attention

Symbolizes quality and promotes goodwill for the owner

Conditions consumers response to automatically recognize owner

December 4, 2009

Trademark EnforcementRegistered Mark Infringement• Confusion, mistake, deception• Section 32 of Lanham Act

Violation of Section 43(a) of Lanham Act• Confusion, mistake, deception or• Misrepresentation

False Advertising

Common Law Actions• Trademark, trade dress• Unfair business practices

December 4, 2009

Summary: Intellectual Property

Patents: Strong Exclusionary Right, Cover Ideas

Copyrights: Strong Exclusionary Right, Cover Expressions

Trademarks: Strong Exclusionary Right, Cover Marketing

James E. RulandThe Law Office of James E. Ruland, P.L.CP.O. Box 392Falls Church, VA [email protected]

Questions?

Special Thanks to William S.

Boshnick of Greenblum &

Bernstein, P.L.C.

U.S. Intellectual Property Laws in International Trade

Kevin C. KunzendorfSughrue Mion, PLLC

2100 Pennsylvania Ave., NWWashington, DC 20037

[email protected]

AIPLAPresentation

forChina State Administration for Industry and Commerce

Outline

Preventing intellectual property right (IPR) problems in international trade

When IPR problems occur – U.S. framework and options for addressing IPR problems

Prevention of IPR Problems

Knowledge of the activity or product

Knowledge of target country’s legal system and IP laws

• Team of advisors in target country Attorneys Business people

Prevention of IPR Problems

Understand what IPR exists in the target country

• Search of relevant IPR databases

• Seek opinions from advisors

Negotiate licenses if necessary

IPR Problems – U.S. Framework

Alternative Dispute Resolution (ADR)

U.S. District Court

U.S. International Trade Commission (USITC)



• Seeks alternatives to litigation

• Neutral party facilitates communication

• Binding or non-binding



• AIPLA Alternative Dispute Resolution Neutral Registry

• WIPO Arbitration and Mediation Center



• Advantages

Relatively inexpensive

Trained, neutral parties

Can help initiate and sustain communications



• Disadvantages

Parties may not be willing to submit to ADR, specifically binding ADR

Requires trust in the neutral party

Effectiveness determined by willingness of the parties to actively participate in the process

Even if successful, ADR may not completely resolve the problem.


U.S. District Court

• 94 federal judicial districts

U.S. Court of Appeals

• 12 regional circuits


U.S. District Court

• General trial courts

Both civil and criminal matters

Criminal cases have priority

Civil cases can take a long time


U.S. District Court

• Parties Plaintiff (the aggrieved party) Defendant (the importing party) District Court Judge Jury (?)


U.S. District Court – key features

• Case initiated by filing a complaint, which is a formal document submitted to the district court.

Must show legal injury of plaintiff by defendant (that is, infringement of plaintiff’s IPR by defendant)

May be problematic if trade goods are outside U.S. or in transit



• Court must have jurisdiction (power) over persons and subject matter

Federal statutory questions (patent, copyright, trademark – ok)

May be problematic in some cases (e.g., license interpretation)

Parties from different states

May be problematic if defendant is wholly outside of US borders



• Scheduled process

Defendant’s answer to allegations in the complaint

Discovery to uncover facts for trial

Expert witnesses

Trial



• Possibility of a jury

Hears testimony

Weighs factual evidence

Decides factual issues, such as credibility of witnesses

• Jury has little or no technical background

Uncertainty


U.S. District Court – Process

• District court judge

Oversees all aspects of case

Written opinion deciding legal issues

Order directing remedies

• Decision may be appealed

U.S. Court of Appeals of the region in which the district court is located

U.S. Court of Appeals for the Federal Circuit


U.S. District Court – remedies

• Monetary damages Compensatory Treble damages for willful

infringement Attorney’s fees

• Injunctive relief to stop infringer from infringing, and prevent future infringement Temporary or permanent


U.S. District Court

• Advantages Parties must participate Court order is binding Injunctive relief and monetary

damages possible


U.S. District Court

• Disadvantages Jury is unpredictable Takes a long time Very expensive


United States International Trade Commission (USITC)

• USITC is an independent government agency

• Section 337 of the 1930 trade law – protect against “unfair competition in import trade”


USITC – over 500 cases since 1974


USITC – Role

• USITC investigates unfair acts or methods of competition connected to importation

“Statutory” unfair acts – U.S. patent, trademark, copyright, and mask work infringement

Other unfair acts – E.g. anti-dumping, trade secret misappropriation


USITC § 337 action

• Parties

Complainant (that is, the “aggrieved” party)

Respondent (that is, the “importing” party)

Staff Attorney from the ITC’s Office of Unfair Import Investigations (OUII)

Administrative Law Judge (ALJ)


USITC § 337 action

• OUII Staff Attorney

Independent, separate third part

Experienced in IP law, usually technically background

Protects the interest of the public when considering the affects of the investigation on the U.S. trade industry and economy.

Helps with procedural issues; provides “sounding board”


USITC § 337 action – key features

• Jurisdiction

In rem, which means it is focused on importation of products, as opposed to the acts or presence of persons.


USITC § 337 action – key features

• Importation

Complainant must show importation of a product connected to the alleged unfair act in order to satisfy subject matter jurisdiction.

• Domestic industry

Economic showing: Requires showing substantial U.S. exploitation of the intellectual property by use of U.S. land, labor, and capital in production-type activities

Technical showing: Complainant or licensee practices the IPR


USITC § 337 action - process

• Complaint reviewed and initiated by the Commission

• Chief ALJ assigns the investigation to an ALJ and a OUII Staff Attorney


USITC § 337 action - process

• Proceedings before the ALJ

Discovery

Hearing (that is, a trial)

• The ALJ Issues an “Initial Determination (ID)” on the merits of all contested issues


USITC § 337 action

• The ID is reviewed by the Commission and the Commission issues a Final Determination ID affirmed ID reversed, and/or sent back to ALJ

• Commission also issues a decision on remedy and bonding


USITC § 337 action

• Remedies

Exclusion order, which is an order prohibiting importation into the U.S. of infringing products

Enforced by U.S. Customs at the U.S. border

Temporary or permanent


USITC § 337 action

• Remedies

Cease and Desist order, which prevents any parties from engaging in infringing activities related to products that have already been imported.

Instead of or in addition to exclusion order

Temporary or permanent

NO monetary damages


USITC § 337 action

• President has 60 days to review the final determination of the Commission

• Possible to appeal the final determination to the U.S. Court of Appeals for the Federal Circuit


USITC § 337 action

• Investigations 1995-2002 (102)

No Violation17%

Violation23%

Withdraw/Dismiss

11%

Settlement/Consent Order49%


USITC

• Advantages

Parties must participate

Relatively quick resolution (12-15 months)

Injunctive and temporary relief available to stop infringement of IPR in the U.S.

Broad jurisdiction – in rem (that is, power over the property)

U.S. Customs enforcement of decision


USITC

• Disadvantages

Fast, invasive discovery

Still expensive – high costs in short period

No damages or attorney’s fees

Thank you!

Questions?

Kevin C. KunzendorfSughrue Mion, PLLC2100 Pennsylvania Ave., NWWashington, DC [email protected]

Documents

American Intellectual Property Law Association Presentation for China State Administration for Industry and Commerce Based on a Presentation by William