Assisting U.S. Industry to Protect and Enforce its Intellectual Property Rights

Christine R. PetersonInternational Trade SpecialistOffice of Intellectual Property RightsSeptember 27, 2012

At the end of this session, you will be able to:

Understand the basics of obtaining and enforcing intellectual property (IP) rights.

® Registered TrademarksTM Trademarks SM Service Marks

© Copyrights

U.S. Patents

Session Objectives

Assess how IP rights adds value to businesses

and explain why counterfeiting and piracy is a problem.

Locate resources to help exporters obtain IP rights and combat infringement.

Speak to U.S. companies about obtaining IP protection.

Session Objectives

WHAT IS INTELLECTUAL PROPERTY?

Part I

What is Intellectual Property?

• Intellectual property can be broadly defined as creations of the mind.

– PATENTS: protect an invention– TRADEMARKS: protect words, symbols, and

other devices for identifying and distinguishing the source of goods

– COPYRIGHTS: protect original, artistic, and literary works, including architectural drawings

– TRADE SECRETS: protect confidential information with independent economic value

Types of Intellectual Property

Some common examples of intellectual property from every day life include: – The latest Harry Potter book– Coca-Cola’s famous bottle – The brand name Microsoft– The McDonald’s Golden Arches– Dyson’s vacuum cleaner

technology– Pfizer’s formula for Lipitor

Slogans: “Plop, Plop, Fizz, Fizz, Oh What a Relief it is”.. for medicine for stomach upset

Letters: IBM for personal computers or FRISBEE for flying discs.

Numbers: 311 for entertainment services – the name of a rock band.

Logos: Nike Swoosh for athletic apparel.

Three dimensional designs: Hershey’s Kisses for chocolate candy

Colors: Pink for Fiberglass Insulation

Scents: Cherry scented motor oil

Sounds: NBC chimes for TV programming

U.S. Trademarks Can Be….

More (Interesting) Examples of Trademark Protections…

Tiffany blue (trademark)

Patent protection for the Shopping Cart

Copyright protection for the Wizard of Oz characters

Cherry scented Motor Oil

How does a company use these forms of intellectual property?

• A company sells a patented product.

• That product may bear the company’s ® trademark. Use TM or SM when waiting for trademark or service mark registration.

• The instructional manual that is sold with

that product may be protected by © copyright.

THE PROBLEM OF INTELLECTUAL PROPERTY INFRINGEMENT

Part II

Why should companies protect their intellectual property?

Piracy, counterfeiting and the theft of intellectual property assets pose a serious threat to all American businesses. – Exporters face unfair competition abroad, – Non-exporters face counterfeit imports at

home, and – All businesses face liability for unsafe or

unhealthy counterfeit goods entering their supply chains.

– Consumers face health and safety risks from counterfeit goods.

How serious of a problem is IP theft ?

• IP theft has a major impact at home: The U.S. Chamber of Commerce estimates that overall intellectual property theft costs 750,000 American jobs.

• Sectors most affected: All industry sectors are affected but manufacturing, consumer goods, technology, software, and biotechnology (including pharmaceuticals) tend to have the highest incidences of counterfeiting and piracy.

Do companies really need to worry about IP protection abroad?

• Foreign manufacturers have copied U.S. products, websites, packaging, and business plans, even though the U.S. company has never done business abroad.

• Foreign counterfeiters can easily steal product pictures, brochures, and logos from websites and register the material as their own inventions in their country, if the company has not registered it there already.

• Some small U.S. companies seek trademark and patent protection in large potential markets well in advance of actually exporting to those markets.

PROTECTING INTELLECTUAL PROPERTY

Part III

Common Pitfalls

• Not obtaining intellectual property protection

• Not enforcing private rights

• Not knowing business partners

How can a company protect itself from IP theft?

Step 1: Conduct an IP audit. Companies need to examine their businesses to see what assets might be eligible for a patent, trademark or copyright protection or trade secret status.

– U.S. Government’s Online IPR Training Module

– Attorneys

How can a company protect itself from IP theft? Step 2: Companies should obtain IP rights in the

U.S. by filing a patent application or registering their trademark or copyright with the proper U.S. Government Agencies.

• U.S. Patent and Trademark Office– www.uspto.gov; 1-800-786-9199– Patent $110-$850; Trademark $275-

$375

• U.S. Copyright Office– www.copyright.gov– $35 (Electronic Filing)

Protecting Intellectual Property in Foreign Markets

• Question: Are a company’s U.S. patents or trademarks valid in other markets?

• Answer: No! Intellectual property rights are generally territorial. This means that a U.S. patent or trademark offers no protection abroad. Companies must apply for patents and trademarks in every market where they seek protection.

How can a company protect itself from IP theft?Step 3: Companies should review their

options for protecting their intellectual property abroad.– Where to protect: Business Decision

• Where do they currently sell their product?• Where do they want to sell their product in the

future?• Where are their products or components of

their product produced?• What are some of the more likely countries

where infringement may occur?

– When to consider: Prior to new product development; prior to export.

Register in Current and Potential Markets

• Trademarks: The Madrid Protocol– File international application with USPTO– 86 countries as of July 2012– www.WIPO.int; www.USPTO.gov

• Patents: The Patent Cooperation Treaty– File PCT application

with U.S. Receiving Office at USPTO

– 146 countries as of July 2012

Register in Current and Potential Markets• As with trademark and patent, there is no such

thing as an “international copyright” that will automatically protect a work throughout the world. Protection against unauthorized use in a particular country depends on the national laws of that country.

• Most countries offer protection to foreign works under certain conditions that have been greatly simplified by international copyright

treaties and conventions such as the Berne Convention.

How can a company protect itself from IP theft?

Step 4: Companies must enforce their IPR. Enforcement is first and foremost the right holder’s responsibility.– Civil Remedies

• Lawsuit or ADR or Licensing Agreement

– Remedies at the Border• Record with customs:

https://apps.cbp.gov/e-recordations

• ITC, Section 337 investigations and exclusion orders

– Criminal Remedies • National IPR Coordination Centerwww.iprcenter.gov (New website)• 1-866-IPR-2060; www.ice.gov

How can a company protect itself from IP theft?

Step 5: Companies need to do due diligence on business partners. They should not assume that their business partner is looking out for their company’s best interest. Intellectual property may be quite valuable.

– Companies should consider using the Commercial Service’s International Company Profile Service

– Companies need to develop strong contractual relationships with their business partners as they may be key to protecting intellectual property.

REVIEW

To Protect Itself from IPR Theft, a Company Should…

1. Conduct an IP Audit

2. Register its IP in the U.S.

3. Identify and protect its IP in priority markets

4. Enforce its IPR at home and abroad

5. Choose business partners wisely

RESOURCES TO ASSIST U.S. COMPANIES

Part IV

– Relaunched in 2012 with expanded content and improved functionality

– Central resource for USG IPR assistance and tools

– Learn more about protecting and enforcing IPR in the U.S. and abroad

26

USG Resources Available to Assist U.S. Companies

USG Resources Available to Assist U.S. Companies

• Online IPR Training Moduleo Basics of IPR protection and enforcement, an IPR

Audit, and more! Now in English, French and Spanish!

• International IPR Advisory Programo One hour free consultation with an attorney

specialized in IPR and the particular country of concern!

• IPR Country Toolkitso Country-specific IPR information and points of

contact!

• IPR Attachéso On-the-ground IPR experts ready to assist U.S.

industry!

Ensuring Companies Benefit from U.S. Trade Agreements

Special 301 Report3 designations:

• Priority Foreign Country• Priority Watch List 2012: Algeria, Argentina, Canada, Chile, China, India,

Indonesia, Israel, Pakistan, Russia, Thailand, Ukraine, Venezuela.

• Watch List 2012: Belarus, Bolivia, Brazil, Brunei Darussalam,

Colombia, Costa Rica, Dominican Republic, Ecuador, Egypt, Finland, Greece, Guatemala, Italy, Jamaica, Kuwait, Lebanon, Mexico, Norway, Peru, Philippines, Romania, Tajikistan, Turkey, Turkmenistan, Uzbekistan, Vietnam.

• Section 306 Monitoring: Paraguay

Find Report: www.ustr.gov

Ensuring Companies Benefit from U.S. Trade Agreements

• Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs)

• World Intellectual Property Organization Internet Treaties (WPPT & WCT)

• FTAs (20): Australia, Bahrain, Canada, Chile, Costa Rica, Dominican Republic, El Salvador, Guatemala, Honduras, Israel, Jordan, Mexico, Morocco, Nicaragua, Oman, Peru, Singapore

• New FTAs: Colombia, Panama, Korea• Currently negotiating the Trans-Pacific

Partnership

• Trade and Investment Framework Agreements & Bilateral Investment Treaties

• Ensuring Compliance with U.S. Trade Agreements

• When we identify unfair treatment:– Meet with business– Form a compliance team – Craft an action plan– Raise the issue with appropriate authorities

Trade Compliance Center and OIPR

THANK YOU

And don’t forget to protect IP!

Christine PetersonOffice of Intellectual Property Rights

Market Access and ComplianceInternational Trade Administration

U.S. Department of Commerce202-482-1432

Christine.Peterson@trade.gov