Protecting Your IP Overseas - Federal Reserve Bank of St. Louis

Protecting Your IP Overseas

1

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Danna McKitrick, P.C.

Attorneys at Law

Protecting Your IP Overseas

www.dannamckitrick.com


Ruth A. Binger, Esq.

314.889.7167

rbinger@dmfirm.com

Protecting Your IP Overseas

Protecting Your IP Overseas

2

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Danna McKitrick, P.C.

Attorneys at Law

www.dannamckitrick.com


Contact Information:

314
-
889
-
7167

rbinger@dmfirm.com

http://
www.dannamckitrick.com
/beyond
-
the
-
fine
-
print/author/ruth
-
a
-
binger/

Ruth serves both emerging and mature
businesses concentrating in corporate law,
intellectual property and technology law, and
labor and employment law. Her commitment to
the success of small to medium
-
sized businesses,
and her understanding of multi
-
faceted issues
inherent in operations, are what distinguish
Ruth’s practice.

Ruth A. Binger

Protecting Your IP Overseas

3

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States:

First, do an internal audit.


What is worth protecting for

defensive and offensive reasons?

o
Intellectual Property are intangible properties that
are products of the mind.

o
It includes trademarks, copyrights, patents and
trade secrets.

o
See the IP Awareness Assessment Tool at The United
States Patent and Trademark Office:
http://www.uspto.gov/inventors/assessment/



Protecting Your IP Overseas

4

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States: Internal Audit

Trademarks


The term for international violations is
counterfeiting
.



A trademark is any word, name, symbol or device that
is used to identify ones services or goods for another.



Trademarks include registered marks, business names,
logos, slogans, domain names, and product
packaging/configuration.


You can register Trademarks with states and the United
States Patent and Trademark Office.
http://www.uspto.gov/trademarks/index.jsp


Protecting Your IP Overseas

5

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States: Internal Audit
Copyrights


The term for international violations is

piracy
.



The law of copyright

provides protection for “original
works of authorship fixed in a tangible method of
expression”.


Copyrights include registered copyrights, written
materials, photographs, illustrations, computer
software, music/film

and website content.



You
register copyrights with the United States Copyright
Office.

http
://www.copyright.gov/eco/


Protecting Your IP Overseas

6

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States: Internal Audit

Patents


Patents

basically

include utility, design and plant.


In
order to

be patentable the invention must be
new

and
not
known to others in the U.S
. and
non
-
obvious
.


Patents
include issued patents, pending applications, mechanical
devices, electronic devices, medicine
/ medical
devises, chemical
composition/process; computer
-
based business process
(software).


You also register
copyrights with the

United
States Patent and Trademark
Office.
http://www.uspto.gov/patents/index.jsp


Protecting Your IP Overseas

7

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States: Internal Audit

Trade Secrets


Any information, including a formula, pattern, compilation,
program, device, method, technique or process, that:

1.
derives
independent economic value, actual or potential, from not
being generally known to, and not being readily ascertainable by
proper means by, other persons who

can obtain economic value from
its disclosure or use, and

2.
is
the subject of efforts that are reasonable under the circumstances to
maintain its secrecy.

Trade secrets are protected by self
-
help; there is
no registration process.

•
Examples
of Trade Secrets are: customer lists,

pricing/cost
data, customer information and

sales
practices, business plans, financial data/forecasts,

manufacturing
techniques, design manuals, production

processes/specifications
and survey/research data.

Protecting Your IP Overseas

8

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States: Internal Audit

Trade Secrets


Internal Self
-
Help to Maintaining Secrecy:

•
locked files

•
computer security

•
stamping materials

•
exit interviews

•
confidential, computer encryption
passwords

•
network security

•
limit distribution

•
secure facilities and files

•
enact self
-
help policies and
procedures


•
contracts with employees and 3rd

parties

•
employment contracts with
employees containing
noncompetes
, confidentiality and
trade secret protections and IP
assignments

•
employee manuals setting forth
procedures regarding
publications/
speeches

•
inventor notebooks


External Self Help:

•
Confidentiality Agreements with 3rd parties
.

Protecting Your IP Overseas

9

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States: Police Your IP

Self
Help



Monitor competitors
’

filings with the USPTO both
with employees and monitoring services.



Keep abreast of what is happening in your
market.


Keep your internal controls up to

date.



Use digital watermarks for

copyrights.


Closely monitor fan activities.

Protecting Your IP Overseas

10

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Starts in the United States: Police Your IP

Enforce IP


Majority of enforcement proceedings are civil
and administrative and not criminal.


The burden of proof is much higher in criminal
cases.


Criminal remedies include prison.


Generally, in order to obtain criminal
enforcement, the issues have to involve public
health and safety concerns, organized crime,
great loss and harm.

Protecting Your IP Overseas

11

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Consider Criminal Enforcement

Assistance



U.S.
Agencies


U.S. Department of Justice. Criminal Division:

Computer Crime & Intellectual Property Section

(CCIPS).


U.S. Attorneys’ Office: Computer Hacking and Intellectual Property
Units (CHIPS).


FBI Cyber Division.


U.S. Immigration & Customs Enforcement (ICE)


The National Intellectual Property Rights Coordination Center (IPR
Center). Online complaint form at
www.ice.gov
.


Internet Crime Complaint Center. Partnership between FBI, the
National White Collar Crime Center and Department of Justice’s
Bureau of Justice Assistance.

Protecting Your IP Overseas

12

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Consider Criminal Enforcement Assistance

Criminal Laws at issue in U.S that should be considered


Criminal Copyright Infringement (17 USC 506) (distribution of 10
copies of one or more copyrighted works with retail value of $2,500
in a 180 day period
)


Trademark Counterfeiting Act (18 USC 2320(a)) (counterfeit marks
on goods and services
)


Economic Espionage Act (18 USC 1832) (theft of trade secrets for
benefit of foreign government or others
)


Smuggling Goods in the US (18 USC 545)


Bootlegging Music (18 USC 2318)


Counterfeit Labeling (18 USC 2318) (counterfeit labels designed to
be affixed to copyrighted property
–

movies, music, etc.)


Protecting Your IP Overseas

13

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Consider Criminal Enforcement Assistance


State and Local Investigative Contacts.

o
See IP. Victim’s Guide, Page 11.

Protecting Your IP Overseas

14

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

General


U.S. IPR laws confer little to no

protection overseas.


Federal protections extend

only throughout the US, its territories and possessions.


International treaties and the laws of

various countries differ significantly in terms of degree
of protection and enforcement available.

Protecting Your IP Overseas

15

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

General


According to FBI, Interpol, World Customs Organization
and International Chamber of Commerce estimates,
roughly 7
-
8% of world trade every year is in counterfeit
goods.

o
This is equivalent to $512 Billion in global lost sales. U.S.
Companies lose about $200 billion to $250 billion.

o
In year 2012, the U.S. Customers and Border Protection
intercepted 20,000 seizures of counterfeit and pirated goods
with a total domestic value of $1.3 billion.

Protecting Your IP Overseas

16

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

General


The industries most commonly affected

are manufacturing, consumer goods,

technology, software, and biotechnology

including pharmaceuticals.


Country IPR Toolkits that contain detailed information
on protecting and enforcing IPR in specific markets can
be found at
http://www.stopfakes.gov/business
-
tools/country
-
ipr
-
toolkits
.


Protecting Your IP Overseas

17

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

General


The American Bar Association Section

of International Law working with the

U.S. Department of Commerce offers a

free one
-
hour consultation with experienced volunteer
attorneys regarding intellectual property rights to small
and medium sized enterprises.
http://www.americanbar.org/groups/international_law
/initiatives_awards/international_ipr_advisory_program.
html


Protecting Your IP Overseas

18

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Administrative Enforcement


U.S. Customs and Border Protection (Border Enforcement)

Due to border control responsibilities, the U.S. Customs and Border
Protection (“Customs”) is uniquely situated to prevent illegal
importations.

o
Customs protects federally registered copyrights and trademarks
that are recorded with it.

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

o
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.

o
Once a customer receives a seizure and forfeiture order from the
ITC, the goods will be subject to seizure.

Protecting Your IP Overseas

19

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Administrative Enforcement

o
The procedure is as follows:

i.
T
rademarks are recorded for a term of years to run concurrently
with the underlying registration;

ii.
C
opyrights are recorded for 20 years, unless the copyright
registration expires before that time;

iii.
A
t any time owners may provide U.S. Customers with information on
suspected infringers (manufacturers, country of origin, entry port,
suspected dates, etc.).

o
Trademark/Copyright Recordation Application available at
www.cbp.gov
.

o
Verifying the recordation of your registration with U.S. Customs.

o
Intellectual Property Rights Search (IPRS).
www.iprs.cbp.gov/help.asp


Protecting Your IP Overseas

20

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Administrative Enforcement


File administrative proceedings in U.S. Patent
and Trademark Office

Protecting Your IP Overseas

21

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Securing and Registering


Territorial

o
Patents and copyrights must be filed in each country where
protection is sought.

o
There is some protection under international treaties or other
international agreements with respect to Copyrights.

o
Under the Berne Convention, copyrights in all Berne and WTO
countries receive automatic protection in all Berne and WTO
countries without any formality (such as registration, copyright
notice, etc.) and is extended on a the basis of national
treatment
-

that is, a U.S. author suing in France under French
copyright law is entitled to the same protection as a French
author suing in France under French copyright law.
http://www.law.cornell.edu/treaties/berne/overview.html


Protecting Your IP Overseas

22

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP
Internationally

Securing and Registering


World Intellectual Property
Office

o
A
list of contact information for most intellectual property
offices office world
-

wide for patents and trademarks can be
found
at:
http
://
www.wipo.int/directory/en
.

o
For instance,
China’s Copyright Office can be found
at:
http://
www.wipo.int/directory/en/contact.jsp?country_id=38&
type=ADMIN_CR
.

China’s trademark office can be found at:
http://
www.wipo.int/directory/en/contact.jsp?country_id=38&
type=ADMIN_CR
.
Information regarding China’s effort to rein
in copyright violations can be found at:
http://www.china
-
briefing.com/en/magazine/view/406

.


3IPR
Patent
Toolkits

o
IP
Patent Toolkits for several countries can be found at
http://www.uspto.gov/ip/iprtoolkits.jsp

®

Protecting Your IP Overseas

23

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Securing and Registering


Trademark
-

Madrid Protocol

o
International Treaty between eighty
-
eight countries (“Contracting
Parties”), administered by the World Intellectual Property
Organization, makes it easier to file for trademark registration in
multiple chosen countries at the same time.

o
By filing one trademark registration application with USPTO, U.S.
applicants can concurrently seek protection in up to 84 countries.

o
You can find information regarding the Madrid Protocol on the
United States Patent and Trademark (“USPTO”) site at
http://www.uspto.gov/trademarks/law/madrid/index.jsp

.

o
Any trademark owner with an application filed on or a registration
issued by the USPTO and who is a national of, has a domicile in, or
has a real and effective industrial or commercial establishment in
the United States can submit an international application through
the USPTO.

®

Protecting Your IP Overseas

24

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Securing and Registering

o
General Requirements

•
The Owner of the US Mark must be the same owner of the same Mark that files the
“basic application” or registration.

•
A certification fee and one country must be identified.

•
The minimum requirements for obtaining a receipt of an international application in
the USPTO is set forth in 37 C.F.R. Section 7.11 (a).
http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf

.

•
The complete international application requirements are set forth in Article 3 of the
Protocol and Rule 9 of the Common Regulations under the Madrid Agreement
concerning the International Registration of marks and the Protocol Relating to that
Agreement.
http://www.wipo.int/madrid/en/


o
Fee

•
The USPTO charges a certification fee for the certifying and transmitting of $100 per
class if the international application is based on a single U.S. application or registration
and a certification fee of $150 per call, if the international application is based on
more than one U.S. application or registration.

o
Filing

•
Electronic forms may be submitted at
http://teasi.uspto.gov/
.

Protecting Your IP Overseas

25

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Border Enforcement Treaties


World Trade Organization

o
Trade
-
Related Aspects of Intellectual Property Rights (TRIPS)
Agreement.

o
The World Trade Organization (WTO) agreement on trade
-
related
aspects of intellectual property rights (TRIPS) upgraded standards of
protection for a full range of IPR.

o
The agreement also provides for the effective enforcement of those
standards both internally and at the border.

o
The TRIPs Agreement is the first multilateral intellectual property
agreement that is enforceable between governments.

o
The Agreement has a strong dispute settlement mechanism to resolve
disputes.

o
Sets the minimum standards for IP protection for Member Countries.

o
IP laws are established and enforced by each individual Member
Country.

Protecting Your IP Overseas

26

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Border Enforcement Treaties


Department of Commerce

o
Global Partners

•
Interpol: World Custom Organization; World Intellectual
Property Organization (WIPO), Asia Pacific Economic
Council (APEC), Trans
-
Pacific Partnership (TPP); Anti
-
Counterfeiting Trade Agreement (ACTA)
http://www.stopfakes.gov/global
-
partners/asia
-
pacific
-
economic
-
council
-
apec


Protecting Your IP Overseas

27

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Watch List


Office of the U.S. Trade Representative

o
Special 301 Process.

o
Procedures used to identify countries that deny
adequate protection for intellectual property rights.

o
Countries may be placed on a “Watch List”
depending on level of IP

protection.

o
May be subject to sanctions.

o
Review conducted each year.

Protecting Your IP Overseas

28

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

Local Support


Seek local support to protect your IP

o
Contact the local trade associations for your
industry.

o
Contact local American

Chamber of Commerce.

o
Contact local officials

who enforce IP.

Protecting Your IP Overseas

29

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Enforcing IP Internationally

STOP


Strategy Targeting Organized Piracy (STOP)
Initiative

o
1
-
866
-
999
-
HALT.

o
Most comprehensive initiative every advanced to
combat privacy and counterfeiting.

o
Dismantle criminal enterprises that steal IP.

o
Help companies establish their rights in the U.S. and
abroad.

o
Reach out to trading partners and build an
international coalition to block fake goods.

Protecting Your IP Overseas

30

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Danna McKitrick, P.C.

Attorneys at Law

Protecting Your IP Overseas

www.dannamckitrick.com


Thank you for attending

“Protecting Your IP Overseas”

Questions?

Ruth A. Binger, Esq.

314.889.7167

rbinger@dmfirm.com

Protecting Your IP Overseas

31

October 22, 2012

Danna McKitrick, P.C., Attorneys at Law

Danna McKitrick, P.C.

Attorneys at Law

www.dannamckitrick.com


Contact Information:

314
-
889
-
7154
morgill@dmfirm.com

http://www.dannamckitrick.com
/beyond
-
the
-
fine
-
print/author/marcia
-
s
-
orgill/


Marcia
concentrates
her practice in the area of
business
and personal taxation
—
especially
complex domestic and international tax
strategies.

Marcia S. Orgill