Embed Size (px)
Citation preview
Protecting Intellectual Property Around The World
6th Annual The Security Summit
Mitchell P. Brook
Partner, Luce Forward858.720.6300
Patents – Technology
• Water tight seals
• Computer Software
• Electronic Controls
Trademarks – Brand• 777
• COKE
• INTEL
Copyright – Written work, music,
art• Books
• Movies
• Software Code
PATENTS
WHEN?
• Before public introduction
• US: 1 year grace period
• Europe: No grace period – absolute novelty bar
PATENTS
WHERE?
Step 1: Initial Application
• One country – Typically home country
• Export License – comes with patent filing receipt
Step 2: International
• One year to file in Paris Convention countries.
• PCT alternative – increase costs, but delay larger
individual country costs up to 18-20 months.
Countries: Most popular for patent filing:
• United States
• European Patent Office
• Japan
• Canada
• Australia
• China … Increasing
PATENTS
PATENTS
PATENT TIMELINE SUMMARY:
1. Develop Invention.
2. File first patent application before public disclosure.
3. Within 12 months, begin international process.
4. Patent granted, 1- 4 years.
COSTS:
• Patents can be very expensive, and take long periods from date of initial
application to patent grant.
• Short-Product Cycles: Consider NOT filing patent application.
Cost v. marketing advantage
• Initial Patent Application
• Foreign Applications:
Translation Required – Translation costs can be expensive.
No Translation Required – reduces costs
PCT: No translation required until national stage filings
PATENTS
EXAMPLE:
• Technology: A new bicycle seat clamp.
• Make Invention: May 2009
• Develop Invention: May 2009-May 2010
Marketing Dep’t signs up to Display at Bicycle Manufacturer Convention: October 2010
Contact patent attorney sometime between May 2009 and September 2010 – earlier the
better.
Draft patent application, revise and file in US Patent Office – September 2010
Test marketing and market assessment: October 2010-August 2011
Foreign filing decision – Yes or No – August 2011
File Foreign Applications – No later than September 2011 – 1 year after initial filing
PCT v. Direct Filings
INFRINGEMENT
Scenario: Successful new technology copied by in low-cost
manufacturing country (China, Taiwan, Mexico etc.)
i. China Strategy: “I do not want to talk to manufacturers in
China because they will not respect patent rights”
• Can enforce in China.
• File patent application in China?
• Use Major Market Blocking Strategy.
INFRINGEMENT
ii. Do you have a patent in the country of manufacture?
• Yes? Can sue in country of manufacture.
• No? Cannot sue in country of manufacture.
INFRINGEMENT
iii. Major Market Strategy
• File patents or trademarks in the major markets, such as
U.S., Europe, Japan, Canada.
• Can block importation via Customs Service.
• Can block sales via Courts or International Trade
Commission.
TRADEMARKS
Branding – Important if the brand will distinguish the product.
First to File Rule: Not United States or Canada, but most other
countries.
When?
Anytime.
Advantage to file before product introduction – inhibits piracy
TRADEMARKS
International Filing:
6 months after initial trademark application
European Union – Community Trademarks Office
Mitchell P. Brook Partner
11988 El Camino Real
Suite 200
San Diego, CA 92130
P: 858.720.6300
F: 858.523.4329
Mitchell Brook regularly handles complex patent and trademark
matters including developing patent and trademark strategies,
preparing and prosecuting U.S. patents, trademarks, and foreign
equivalents, technology licenses and other transactions.
Mr. Brook represents established companies, as well as emerging
companies, on strategic issues concerning technology enforcement,
development and branding. He has handled litigation and licenses
with combined values exceeding $1 Billion. His areas of expertise
also include patent and trademark protection in the U.S. and other
countries. He has an international perspective with expertise in in
emerging and established markets.
