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Protecting Intellectual Property RightsProtecting Intellectual Property Rightsin International Tradein International Trade

J. F. (Jim) Chester, JD/LL.MJ. F. (Jim) Chester, JD/LL.M

Cowles & Thompson, PCCowles & Thompson, PCDallas - TylerDallas - Tyler

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Why does IP matter?Why does IP matter?

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Top IP “Myths”Top IP “Myths”

Only large “high-tech” companies Only large “high-tech” companies have IPhave IP

Securing your IP rights in the US will Securing your IP rights in the US will give you protection in other give you protection in other countries, as wellcountries, as well

- EVERY business has IP Assets. - A significant amount of innovation comes from individual

inventors & SME’s

In most cases, US IP rights mean nothing outside US

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International IP ProtectionInternational IP Protection

– Protecting US-created IP abroad Protecting US-created IP abroad continues to be a huge issue for continues to be a huge issue for American companies. American companies.

– Counterfeiting is a multi-billion Counterfeiting is a multi-billion dollar annual industrydollar annual industry

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IP RightsIP Rights

1.1. IdentifyIdentify

2.2. SecureSecure

3.3. EnforceEnforce

Protection Involves Three Phases

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Identify IP RightsIdentify IP Rights

• TrademarkTrademark• CopyrightCopyright• PatentPatent• Trade SecretsTrade Secrets

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Types of IPTypes of IP► TrademarksTrademarks

Any name, symbol, figure, letter, word, or mark Any name, symbol, figure, letter, word, or mark adopted and used by a business to designate its adopted and used by a business to designate its goods/services and to distinguish them from those goods/services and to distinguish them from those of othersof others

Includes service marks, certification marks Includes service marks, certification marks Also Also Trade Dress Trade Dress - Identifies the source or good - Identifies the source or good

by:by:

► Packaging Packaging

► Total image of a productTotal image of a product

► Look and feel of businessLook and feel of business

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Types of IPTypes of IP

CopyrightCopyright- exclusive right to make copies, - exclusive right to make copies, license, and otherwise exploit a license, and otherwise exploit a literary, musical, or artistic work, literary, musical, or artistic work, whether printed, audio, video, etcwhether printed, audio, video, etc

- Can last 100+ years- Can last 100+ years

- Under Berne Convention, this is the one - Under Berne Convention, this is the one type of US IP right that gets automatic type of US IP right that gets automatic protection in other countriesprotection in other countries

- Don’t need registration, but registration gives - Don’t need registration, but registration gives additional rights/benefitsadditional rights/benefits

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Types of IPTypes of IPPatentsPatents- the exclusive right to an inventor to manufacture, use, - the exclusive right to an inventor to manufacture, use,

or sell an invention.or sell an invention.

- Can only come from the US govt.- Can only come from the US govt.

- Must meet statutory requirements- Must meet statutory requirements

novel, useful, non-obvious, etc.novel, useful, non-obvious, etc.

- Expire after 20 years after filing – NO renewal- Expire after 20 years after filing – NO renewal► (Design patents – 14yrs. From issue of patent)(Design patents – 14yrs. From issue of patent)

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Types of IPTypes of IPTrade SecretsTrade Secrets- Secrets secrets kept from the - Secrets secrets kept from the

world by that relate to how to manufacture, world by that relate to how to manufacture, use, or sell something (i.e., give a use, or sell something (i.e., give a competitive advantage)competitive advantage)

- No registration required - No registration required

- Does not expire- Does not expire

- Must be protected (e.g., limit access, NDA, - Must be protected (e.g., limit access, NDA, etc.)etc.)

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-NDA’s/Confidentiality AgreementsNDA’s/Confidentiality Agreements

-Partner/JV AgreementsPartner/JV Agreements

-Assignments/TransfersAssignments/Transfers

-““Work for Hire” and development Work for Hire” and development agreementsagreements

Securing IP Rights - DirectlySecuring IP Rights - Directly

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-In the United StatesIn the United States

-TM, SM, trade dress – USPTOTM, SM, trade dress – USPTO

-Patents – USPTOPatents – USPTO

- Copyrights – US Library of Copyrights – US Library of CongressCongress

-International International

-WIPO (Patent); Madrid WIPO (Patent); Madrid Protocol (TMs)Protocol (TMs)

-Foreign Gov’tsForeign Gov’ts

Securing IP Rights - IndirectlySecuring IP Rights - Indirectly

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Enforcing IP RightsEnforcing IP Rights

► Investigating claims/potential Investigating claims/potential infringementinfringement

►Drafting letters of inquiry & Drafting letters of inquiry & “Cease & desist” letters“Cease & desist” letters

►Negotiating settlements & Negotiating settlements & consent agreementsconsent agreements

►Prosecuting & defending Prosecuting & defending infringement lawsuitsinfringement lawsuits

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Stop IP-infringing ImportsStop IP-infringing Imports• Because of its border control responsibilities, the U.S. Because of its border control responsibilities, the U.S.

Customs & Border Protection (“Customs”) is uniquely Customs & Border Protection (“Customs”) is uniquely positioned to prevent these illegal importations.positioned to prevent these illegal importations.

• To be eligible for recordation with Customs,To be eligible for recordation with Customs,• trademarkstrademarks must first be registered with the Principal must first be registered with the Principal

Register in the U.S. Patent and Trademark Office Register in the U.S. Patent and Trademark Office (USPTO), (USPTO),

• copyrightscopyrights with the U.S. Copyright Office of the Library with the U.S. Copyright Office of the Library of Congress. of Congress.

• Registered works can be recorded via Registered works can be recorded via Intellectual Property Rights e-Recordation (IPRR) Intellectual Property Rights e-Recordation (IPRR) online system.online system.

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• Trade namesTrade names, which cannot be , which cannot be registered at the Patent and registered at the Patent and Trademark Office, take longer to be Trademark Office, take longer to be recorded with Customs. recorded with Customs.

• Notice of tentative recordation must Notice of tentative recordation must first be published in the first be published in the Federal Federal RegisterRegister and in the and in the Customs Bulletin,Customs Bulletin, after which interested parties have the after which interested parties have the opportunity to oppose the recordation. opportunity to oppose the recordation.

Stop IP-infringing ImportsStop IP-infringing ImportsTrademarks, Trade Names and CopyrightsTrademarks, Trade Names and Copyrights

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• Once a trademark, trade name, or copyright has been recorded, Once a trademark, trade name, or copyright has been recorded, Customs has the authority to deny entry to or seize goods that Customs has the authority to deny entry to or seize goods that infringe upon the recorded right.infringe upon the recorded right.

• Domestic value of goods seized for IPR violations in FY2008 Domestic value of goods seized for IPR violations in FY2008 increased by 38.6 % to $272.7 million from $196.7 million in FY increased by 38.6 % to $272.7 million from $196.7 million in FY 2007.2007.

• IPR seizures of products posing potential safety and security IPR seizures of products posing potential safety and security risks increased by more than 124%, from $27.8 million to $62.5 risks increased by more than 124%, from $27.8 million to $62.5 million.million.

• China was the top source country for IPR seizures of infringing China was the top source country for IPR seizures of infringing products in FY 2008, accounting for 81% of the total domestic products in FY 2008, accounting for 81% of the total domestic value seized. Footwear was the top commodity seized, value seized. Footwear was the top commodity seized, accounting for 38% of the total domestic value.accounting for 38% of the total domestic value.

Trademarks, Trade Names and CopyrightsTrademarks, Trade Names and Copyrights

Stop IP-infringing ImportsStop IP-infringing Imports

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PatentsPatents • Customs’ authority to help patent owners protect their rights is Customs’ authority to help patent owners protect their rights is

limited by law – and practicality. limited by law – and practicality.

• Customs does enforce exclusion orders issued by the Customs does enforce exclusion orders issued by the International Trade Commission under Section 337 of the Tariff International Trade Commission under Section 337 of the Tariff Act of 1930. Act of 1930.

• Exclusion orders are issued where the Commission determines Exclusion orders are issued where the Commission determines that Section 337 has been violated through unlawful, unfair that Section 337 has been violated through unlawful, unfair methods of competition or unfair acts involving the importation methods of competition or unfair acts involving the importation of goods. of goods.

• Once Customs receives a seizure-and-forfeiture order from the Once Customs receives a seizure-and-forfeiture order from the ITC, the goods would be subject to seizure.ITC, the goods would be subject to seizure.

Stop IP-infringing ImportsStop IP-infringing Imports

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Concluding ThoughtsConcluding Thoughts

Every company has IP assets – though Every company has IP assets – though many don’t adequately protect many don’t adequately protect theirs.theirs.

A “Proactive” strategy with regard to IP A “Proactive” strategy with regard to IP assets is generally much less assets is generally much less expensive than a “Reactive” strategyexpensive than a “Reactive” strategy

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Questions?Questions?

Email Email jchester@cowlesthompson.comjchester@cowlesthompson.com

Direct Direct 214.672.2114 214.672.2114

Toll Free Toll Free 1.877.34.World1.877.34.World