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Foreign Policy Analysis
Global marketplace

Global marketplace

At this time I’m gonna introduce our
moderator Karen Farriner she is with our office here and she’s
going to talk about or with all of our IP attache husbands or futures and it’s
a program here we have at USPTO where we go out into other countries they focus
in regions of the world providing information on intellectual property
whether it be patents trademarks copyrights or enforcement they do a lot
of work internationally and they’re gonna tell you all about that and how it
affects you and your business thank you so welcome thank you very much for
coming this afternoon and stay for the last panel I’m hopefully we’ve saved the
best hopefully we have saved the best for last my name is Karen theatre I’m
the deputy chief policy officer of the office of policy and international
affairs so I’m really happy to have three representatives of our office here
today Dominick Keating Dorian moszer kovitch and Elaine Wu I’ve worked with
all of them for a very long time and they will represent our office from very
well in our office we have several main groups the intellectual property attache
program which you’ll be hearing about we have five policy teams patent trademark
copyright enforcement and China policy team so we have groups of attorneys
within that we also have the global intellectual property academy and we
have several other sections that are relevant to general policy making such
as the office of the chief economist so I’m very excited to have the opportunity
to talk to you all because our office offers some very important resources to
SMEs and we really want to make sure that you can make your invention a
success and we if we can help you do that we’re
very happy to do that the main thing I really want you to understand and make
sure everybody knows is getting a US patent is very important but a US Patent
just protects you in the US I don’t want anybody leaving here today thinking you
don’t need other types of intellectual property protection for example if
you’re going to be having it manufactured in China we probably should
be looking at getting protect a patent in China as well so please understand
that there’s no such thing as a worldwide patent filing through the
patent cooperation treaty helps you get patent applications filed worldwide but
there’s no international patents you have to get patents wherever you want
protection for your inventions so without very brief introduction I’m
going to turn first to my team who will give a general introduction of
themselves and then we’ll have some questions thank you Karen
I’m Tom Keating I wanted to just briefly introduce myself I started with the
agency more than 20 years ago I was a started as a trademark examining
attorney I had a background a master’s scream in biotechnology and some
research experience I wanted to work as a patent examiner
there there was a hiring freeze on at the time in patents so I was able to
find a job as a trademark examining attorney did that for a very short time
just over a year until the hiring freeze was lifted and then I applied to and got
a job as patent examiner wonderful job you really enjoyed working in
pharmaceuticals and it was heterocyclic organic chemistry so pharmaceuticals a
little bit of biotechnology and then after a few years of doing that I had
the opportunity to go work in the office of legislative and international affairs
as a patent attorney got to enjoy that eventually our only IP I – a position at
the time which was based in Geneva opened up and I applied to that job and
was selected and I arrived in Geneva to start that job just a few months before
a round of multilateral trade negotiations started at the WTO I in
Geneva so is really exciting two years too
there I had a lot of fun and then I came back to us PTO headquarters to work in
the office of policy International Affairs first for a few years as a
patent attorney and then we formally launched the IP attache program creating
new positions around the world and I was asked to go to New Delhi India to open
our office there which I did and I stayed there for four years serving as
an IP attache I had a wonderful experience doing that and then came back
to headquarters and shortly after that began directing the program so I’ve had
a wonderful experience here at USPTO I think it’s a very professional agency a
great place to work and and I hope that you guys have great success in working
with your patent examiner’s and other officials here at USPTO Thank You Don
maybe we’ll jump to to Elaine hi I’m Elaine Wu and I’m the senior counsel for
China at the office policy international affairs at the US patent trademark
office I started out in private practice for a number of years in several large
DC of law firms and decided that I didn’t want to work 24 hours a day and
so came to the Patent and Trademark Office have been here almost 20 years I
also did a little stint at the office of the US Trade Representative so I have
somewhat of a trade background and also a patent litigation background and I’m
the senior counsel for the group that deals with China so I was heard the tail
end of the talk before and there was a lot of interesting things that people
were saying about manufacturing in China and doing work in China and so we have a
whole group dedicated doing China work I’ll talk about that a little later but
but it’s it’s an interesting interesting time to be doing work with China these
days but we have a lot of expertise in the office and I’m excited to talk to
you about how we can help you all out for those of you who are interested in
that market Thank You Lee Dorian good afternoon everyone my name is Dorian
mazurka vich I’m an attorney advisor in the office of policy national fair
working on the Enforcement Team professional my background in college
was biology and chemistry and I did some work in cell research and also in
organic chemistry and then following that I went to law school and became a
patent attorney in private practice I then moved into doing an IP litigation
and also complex commercial litigation during that time I was also a volunteer
arbitrator at the Philadelphia Municipal Court I then received a fellowship teach
intellectual property law overseas which pulled me into the international IPR
arena from there I joined the US Patent and Trademark Office and then became
their electoral property attache based out of US Embassy in Brazil covering
Latin America and then since that time now I’ve been part of the office of
policy here working on enforcement issues thank you
so as you can see that people here today have a really deep experience in
intellectual property and now I’d like them to talk a little bit again about
the different teams that we have and some of the resources that we have
available to SMEs maybe we should again start with Don
thanks Karen the IP I – a program is a tremendous resource for small inventors
and SMEs about a third of the folks who contact us for assistance our SMEs
including small inventors IPA cheese our diplomats the US diplomats but they’re
also see your intellectual property lawyers the average number of
experienced as an IP lawyer is more than 15 so they’re the very useful resources
a lot of experience that could be brought to bear to help you all in the
beast and the US embassies and consulates around the world and I’ll
just you can see on the screen locations where we are and I’ll just talk you
through it we’ve got Laurie Hamel in Rio de Janeiro
Brazil she’s covering Brazil what called Mercosur and the Guyot Kiana’s think
about the eastern side of South America and then an Cheatham is Italy
through covering the western side of South America and then if you move north
to Mexico City we have Cindy Henderson who’s an OPI a attorney who’s just
coming into the job she’s gonna arrive later this month and then when you hop
over the Atlantic to Brussels well first starting with Geneva we have Christine
Christine Schlegel mulch and Debbie Lashley Johnson two very talented
attorneys working on World Trade Organization issues and World
Intellectual Property Organization issues and then a little bit further
north in Brussels we have Susan Wilson she covers all of the European Union and
that’s a very important market for a lot of SMEs and small inventors if you move
a little further east you’ve got Kiev Ukraine and that’s a new
office that Dorian is going to be opening in the coming weeks and he’s
prepared to go out he’s been been selected he served as an IP at ashay for
us in the past and Rio and we have complete confidence that he’s going to
do a bang-up job in that new location a little further to the east we have
Kuwait City PD mayor Berry’s our IP a – a they’re covering all of the Middle
East and North Africa he’s a patent attorney by background and
as I mentioned over IP I – a czar I P lawyers and then I will be further to
the east in New Delhi we have Shelby JA who’s our local IP specialist and I
should mention here that in addition to the 13 IP of shooting positions we have
in the program we have 30 local hires and among those about a third of them
are local IP lawyers so each of the at two shades has local IP lawyers to help
them with the issues and to understand how the local IP system works and to be
an additional resource for you all and then moving further the East in Bangkok
Thailand via Tennessee suka pinda who has a PhD in biotechnology she’s an
attorney patent attorney she covers all the ASEAN region and then in China we
have three positions Beijing Guangzhou and Shanghai Duncan Wilson is in Beijing
Conrad Wang is has served for five years for us in Guangzhou in the past
he’s here at USPTO headquarters but on October 3rd he’s gonna be going back out
to Guangzhou and we hope that he’ll stay for another five years to be such a
great resource and we selected a new IP attache for Shanghai who hasn’t been
announced yet but that will be coming very soon so those are the locations
were located what work do we do well we we help to improve intellectual property
systems for your benefit this is done by directly advocating with those
government officials that means sitting down with them and explaining our
perspectives on electoral property why policies laws and regulations should be
changed to make assistant systems more effective for protecting and enforcing
electoral property rights we also train government officials these are this
includes patent examiner’s trademark examiner’s customs officials judges
police anyone who works on intellectual property we train them to help them
become more effective at what they do and a third component of their work is
we reach out to the public to help them to understand the importance of
intellectual property why it should be respected why should be protected why it
should be enforced and that it makes ads it creates gradual change within a
country or region and but it’s been fruitful for us so far and a fourth
component of their work that’s very important to you all as we directly
assist us stakeholders who come to us and we have stakeholders including small
inventors including SMEs who come to us all the time asking for assistance the
ASA’s sometimes provide assistance that’s simply explaining how to use the
IP system locally here’s you know how you would file your patent application
this is the correct point of contact in the custom among the customs authorities
this is how you work with the police to conduct a raid this is what you do if
you get into a legal dispute locally these types of questions this type of
information can be extremely valuable there are times when we see
discrimination or some other problem that’s systemic that affects our our
inventors and our SMEs and in those cases the at O’Shea’s will sometimes
approach the host government and explain the problem often
identifying the specific individuals having the problem – in order to protect
them but identifying the issue as a bigger picture picture problem and
trying to get assistance and we’ve had many examples of success a one example
of when I was in New Delhi we were getting ready I was covering the entire
region of South Asia and we were getting ready for a trade a Tifa trading
investment framework agreement negotiation in Sri Lanka in this
negotiation is headed by the US Trade Representative’s office but they draw
upon the other agencies for support and I was one of the team a part of the team
I went down in advance and met with a number of US stakeholders who are doing
business there to find out what the problems were and if we heard from a
number of businesses that the the government the Sri Lankan government was
using unlicensed software so they were just you know pirating you know using
pirated software not paying the us right holders so I prepared a paper on that
position paper on that gave it to the US for trade representatives office they
cleared it you know with the other agencies when we entered into the teeth
of negotiation they asked me has the IP out of shade to raise the issues and
lead the negotiation on that particular topic ultimately the Sri Lankan
government the Director General of the IP office on behalf of the Sri Lankan
government agreed to do something about it
and a policy was passed well after following up with that director general
policy was passed to prohibit the government use of unlicensed software
saving us stakeholders potentially millions of dollars that was just one
small example probably others here would have other examples but I think once
again it’s a very valuable resource it’s there for you if you go to the USPTO
website you can go to the IP out-of-shape pages and you’re looking at
part of the IP out-of-shape pages on the screen they have if you click on each of
those certain squares on the map you’ll see a picture of the IP I – a their
contact information in either biography if you want that but you can reach out
to them send them an email give them a call I recommend sending them an email
because of the differences in time zones and they’d be happy to talk with you and
help you to to work through some of the challenges that you might be case
overseas with that I’ll pass the floor Thank You Don I think you’ve provided a
very helpful overview of the IP activeshade program where they’re
located and some examples of how people can help Elaine would you mind talking a
little bit more about your experience with a China IP at the shays and what
the China team and the China Resource Center add to this yo JD so taking from
what Dom has said and he gave a really great introduction about the IPAs and I
kind of want to give example of how it actually works for us in China and some
examples of specific issues that we’ve had to deal with rights holders and how
we’ve managed to in part solve some of the issues so as Dom says we do have
three offices in China and so prison we have two IPR caches with a person in
Shanghai that will be going there very soon and on the ground we actually have
a China team that has nine lawyers here at the PTO all of us have expertise in a
specific area concerning China so for example I work
on pharmaceutical and patent related issues I have a colleague that is an
expert on enforcement issues I have another colleague that’s an expert on
trademark issues so so all of us have expertise in a specific intellectual
property area we also have a copyright attorney also someone that’s that is
expert in trade secret areas on the ground in China our IP attache is often
also have specific expertise for example Duncan Wilson who is our IP attache in
Beijing he’s actually spent seven years in China as a trademark attorney before
he came to the PTO so he has specific experience in China on trademarks and so
and he is a and he has several attorneys in his office that are Chinese trained
attorneys now Duncan himself is fluent in Chinese he speaks like a Chinese
native he he is not however if you closed your eyes and you don’t see that
he’s a white guy you’ll think that he’s speaker is really really excellent and
so these attache x’ have other Chinese trained attorneys that are obviously
fluent in Chinese and also fluent and also our Chinese trained teachers so
they know the Chinese Chinese intellectual property law very well so
we have lots of examples where we’ve worked typically what happens it’s is
for example if you’re a small company you’ve had have an issue in China you
can call us up we’ll talk to you and talk you through your problem we cannot
provide you legal advice but we can often point you in the right direction
of where you need to go and and then often what we do is we introduce you to
the IP attache in Shanghai or Guangzhou or Beijing depending on where you have
your problem or attempt depending on what exactly you want to do if you want
to visit China and often of course obviously it’s a good idea for you to do
so if you want to file for protection or you want to establish a business entity
in China then the FBI attache can work with you and can help you navigate the
intellectual property environment in China to do so the IP attache in China
also works with a foreign commercial service within the Department of
Commerce and they also have people in the foreign commercial service that
actually can give you even more broad in general information about structuring a
deal or finding someone someone who with whom you may be able to find some form
some sort of joint venture or help you or help you deal with the due diligence
if that is absolutely required in China if you want to have a business partner
there so our IP at caches work hand-in-hand with the foreign commercial
service so it really is kind of a package deal so it could really help a
lot of a lot of you who who do want to have do do want to do business in China
I want to just give you just one specific example of something that we
did help with a company it is with a large shoe company shoe manufacturer one
of the issues in China is what we call local protectionism and that is that
often at a local at a local level the courts and administrate enforcement says
sometimes it’s biased towards local companies particularly champion
companies and so in this example we when we found that there were procedural
irregularities in the court system we actually had one of our IP at a Shea’s
and one of the Chinese trained attorneys sit in the hearing this is a trademark
infringement action and we had the person sit in the hearing just to
monitor to make sure that there would be no other procedural andron or a Burnout
abnormalities that the court would be engaged in and as a result of someone
sitting in and just basically making sure that all the procedures were
followed it actually helped with the outcome so this is kind of an example of
something that can be done and has been done with a lot of rights holders who’ve
had issues with those kinds of things those kind of abnormalities or local
protectionism issues which is really really common in China so that’s kind of
an example so we really work in hand-in-glove with with IPR Tosh’s on
the ground they are our ears and eyes on the ground they do have the most updated
information often even more current than what we have about changes legal changes
and so on and as and and also they have lots of very strong connections with a
patent and trademark and copyright offices in China and so that is also
often very useful certainly for us as we advocate for legal change with these
offices but also particularly for US companies that would are interested or
need to talk to the patent office because of some concerns that they have
with with their invention so this is just a quick example Thank You Elaine if
it could always be so simple just by sitting next to someone we help with
your outcome but that was a great example and something that we’re happy
to do of course they provide much more sophisticated assistance as well not
legal advice but still significant help especially just pointing to the
resources you know those conversations really help us they we get a better
understanding to what’s really happening and that we
can make sure that when we have the opportunity to talk to the foreign
governments we especially when we hear the same story again and again and we do
tend to hear the same story sometimes we can say no actually well your procedure
says X we’re hearing from many different stakeholders that what’s happening on
the ground is why what we can what can we do to change that because that wasn’t
that’s not what’s published in your website that’s not our expectation for
how what would happen in that process and we can help make change and if we
can’t help make change then we can call it out in the appropriate document to
try to move slowly toward change Duran maybe now you could talk more about the
enforcement team and Athiya and how the enforcement team also works not just
with the USPTO but all of the other government resources I know this is a
tall order but these are just the IP at touchet’s that we have around the world
to help don’t you I mean Dorian you have a huge network of other officials that
would be very hopeful as you begin your journey toward a very successful
business so I know that most of the conference here has been focused about
IP protection how do you secure protection for your invention or your
idea when you look at them here we know so so I know the focus of
the conference so far has been about securing your intellectual property
rights a patent for an idea or some design when you look at the intellectual
property universe I guess the first part would be securing protection for the
idea the second part of that equation would be how to enforce that protection
once you’ve already gone the patent or the trademark and so as remember the
enforcement team what my office works on is making sure that once those rights
are are acquired by the inventor to make sure that they’re protected whether it’s
simile or criminally through the court systems now when we look at intellectual
property there is porous patents trademarks copyrights trade secrets as
well and so in our office what we do is we work both domestically and
internationally on seeing what we can do to assist us entities in enforcing their
rights now earlier on Karyn had had mentioned that I guess the one important
concept is that IP rights are territorial so therefore any right you
have in u.s. does not have enforcement or protection in a foreign country I
think a seven seven part of that second part of that our equation would also be
that IP rights are private rights so to the extent that there is an infringement
of that right it really caught falls upon the rights holder to seek some sort
of protection within the court system what we have been able to do is try to
help assist the companies or private individuals in in securing that
enforcement and so we work domestically through various other government
agencies we have a cooperation with the National Association of attorney
generals we also work closely with a lot of state police officials and also with
the Federal Judicial Center on training and capacity building to make sure that
they are aware of their challenges involved in piracy and counterfeiting
and what sort of support that we can give them here from the US Patent and
Trademark Office another thing we do is we provide guidance to us inventors and
also small business owners and we do that
one through the hotline that we’ve establish which is one eight six six
nine nine nine Holt it’s called the stop fakes hotline
again it’s one eight six six nine nine nine halt and that is a hotline that’s
staffed by myself and twelve other to ten or twelve other attorneys and you’ll
get a chance to talk to us and although we are the attorneys we can’t be
providing legal advice but we can give you some guidance on what sort of
options there could be in the kind of landscape you’re facing with regards to
an electoral property enforcement challenges we also have a website that’s
been set up which is wws topics govt and that provides a lot of different
toolkits both domestically and in foreign countries on how the electoral
property protection and enforcement system works in those countries so I
encourage you to check out those resources again the website is WWF CoV
now in addition to our domestic work we also work internationally providing some
support to the US Trade Representative on on trade policy issues what many of
you might not be aware of is that when you hear about free trade agreements
being negotiated in the news very often there are strong intellectual property
protection and enforcement provisions that the US looks to negotiate and they
look to ensure to maximize access and also to maximize the protection and
enforcement of US and electoral property right owners that look to enter into
foreign markets to look to kind of access larger larger markets for their
further consumer goods so at the USPTO what we also do in the office of policy
international affairs is provide support on those negotiations going over the
provisions in those agreements to make sure that they maximize the production
for us the US consumers in addition the other work we do is provide support here
to the X Y P attache program which Naumann mentioned and also work on
training capacity building for those foreign law enforcement officials now
when you’re looking at the issue of intellectual property enforcement it
spans of wide gamut of area it would be piracy counters
counterfeiting and also now which is a more troubling area would be trade
secret protection I know earlier in some of the conference speakers had mentioned
that instead of proceeding for patent protection many of them instead she keep
their information proprietary as trade secret protection and so an area that
we’ve been getting more engaged on and this is this sphere and I will just make
a plug for a conference we’re going to be holding next Wednesday here at the US
Patent and Trademark Office called leveraging trade secret ection and
that’s gonna be focused on criminal enforcement of trade secrets we’re going
to have speakers from the FBI from different Department of Justice branches
to discuss what are the best strategies for protecting trade secrets and what
sort of support the US Department of Justice has been providing on protecting
trade secrets which are threatened both internationally and perhaps here
domestically through some sort of misappropriation so that’s just a kind
of thumbnail sketch of the kind of work that we do here at OPA and the
enforcement team thank you Dorian and actually I think I might have calendar a
bit for Thursday it’s the 19th right like whatever a day of the week that is
next week it’s on the 19th and so that trade secret program should be excellent
as during and setage will be webcast so even if you’re not in DC you can watch
it anywhere online and moreover even if you already have plans for that day you
will be able to watch it any time we’ll keep it available on our website for for
awhile I don’t know how long at least a year that’s usually our plan so now you
should have a pretty good understanding of the USPTO resources that are
available to you should you intend to take your invention or your business
globally we did want to have some time for some questions I saw that prior
panel was really getting some great questions so
if okay dude alright someone bringing a microphone around thank you and then
there’s another question here for next thank you I’m just a small inventor I
have a number of patents and the original ones I just worried about us I
really hadn’t gotten into the PCT business and then on the more recent
ones that do have more global potential I get into the PCT so I’d done the
provisional then the PCT I’m sort of giving an example now because this will
be beneficial to them and give you some insight into what I’ve gone through and
so I did the provisional and then I did the PCT well of course now you’ve got
more time and like anything you sort of go through and you realise as you’re
developing a product that things are not exactly the way you want you improve
them so now I get to the point where I’ve got to file with the PCT but I now
have new figures I have new designs I’m now stuck on the old provisional so what
happened is I didn’t realize you couldn’t do a continuation in part with
for all these other countries although they did send a letter back telling me I
could have done it in Zimbabwe and Luxembourg anyways and some of you may
not understand it but the point is is when you file these things like a PCT it
damn well better be close to what you want in that utility patent because then
when you seek the international patents you’re stuck with it right or am I wrong
see so what I’m hoping is what I’m saying is the truth about what the
experience was because essentially I didn’t really know it and the guy that
was doing it had done a couple PC teas and he really wasn’t himself that
experienced in going in it and so the first question is one these are issues
are very important but then and the other is where would I have gone to even
find that out in the first place okay so that’s a very good question because
we’re just talking here about the office of policy and international
Affairs and what we can do to help you getting international protection but in
addition to all of the resources that we provide we have a patent assistance
Center we have a trademark assistance center we have pro se art unit the USPTO
has a huge array of resources to try to help you but of course we want people I
would as a former patent examiner strongly encourage you to hire a patent
attorney hopefully somebody who’s what we say
prosecuted but filed a bunch of patent applications so that they really know
what they’re doing we wouldn’t want you to hire somebody who thinks that you can
file a continuation and part PCT application that makes no sense so we
want you to make sure that you’re getting their appropriate kind of
protection it would be sad if they filed for design a design patent or the
invention was really more a utility so the USPTO has great resources for that
that’s not necessarily what we do but we would connect you with those people
should you call with a basic patent question I understand right now there’s
there’s quite a few people who aren’t here because they’re taking advantage of
the kind of assistance that the Patent and Trademark offers we have patent
examiners who and supervisory patent examiner’s and staff whose whole job is
to provide that kind of technical assistance so please avail yourself of
it and ask questions make sure that you get a clear answer because you don’t
want to start off your career and intellectual property on a misconception
and Karen can I just also mention I didn’t mention that earlier I did I do
also want to put a plug for our China IP roadshows and this is focused on China
of course but so we do have China IP row shows as part of the work that we do in
our office of policy and international affairs as part of the China team and so
we have gone to 27 cities in the country ranging from New York City to Boise
Idaho I was Boise Idaho last winter fabulous place by the way
it’s really nice anyway so so I just want to let you know for those of you
who are particularly interested in China we do have bipierrot shows that we do in
all these cities and we spend and date they are free you just kind of have to
get to Boise or wherever we’d actually did one recently in Baltimore I’m going
to do one in Princeton but the road shows that are all over the country that
really focus on China specifically on China
and there are attorneys we have actually attorneys there that are expert in
filing and in China and so there they’re going to know a lot about what you can
do and can’t do and so I just want to put a plug on that and I noticed that
Karen’s put our website our the China Roadshow website page on our website I
invite you to look at that and we have actually several shows coming up and if
you look at that now there you’ll see some of the roses are coming up thank
you hi my questions for Dorian our US patents enforceable against imports
basically our my personal rights protected from imports what the so with
regards to protection of your natural property rights coming in from overseas
trademarks and copyrights are protected at the border by US customs by Customs
and Border Protection with patents however in order to have those seized
you would have to file an action with international trade commission it’s
somewhat like a minute mini litigation process and you would file it’s called a
3-3-7 action with the ITC and the ITC specifically provides jurisdiction over
unfair competition regarding importation so there isn’t any protection through US
Customs but what happen is you get a limited or an extensive order from the
ITC upon the determination that there is a potential infringement so it’s
somewhat like a mini trial regarding whether there’s trademark or there’s
patent infringement thank you so I have a question so is
there any advantage to filing a PCT first or a US patent first can you
comment a little bit more on that I can give you some some a general response so
you can file a u.s. patent application and get it examined or you could file a
patent cooperation treaty application which would initially have a search
report and then a preliminary examination report and then you could
decide where you wanted to enter the national stage the advantage to filing
the US application first is you would tend to get a quicker examination and
perhaps a quicker patent the advantage to filing the patent cooperation treaty
application is that you would have more time to decide what you want to do and
you kind of have that step right wise approach where you would see the search
report and make know better whether or not you’re you would eventually get a
patent so you can do it both ways there are advantages and disadvantages to each
approach we could I think that in addition to the China Roadshow with our
punch cooperation treaty group goes around the US and does some basic
education on the patent patent cooperation treaty they would go into
more details to talk about the advantages and disadvantages of the two
different approaches but in general people choose the PCT route because it
gives them more time to decide whether or not to invest in filing applications
in foreign countries people choose the u.s. first approach because they want a
speedier determination as to whether or not they’re going to get a US pound Chansey at a time independent yeah right
so we have not yet put it on you know online yet and and partially it’s
because we have to get all the speakers to agree to have the broadcast online so
in addition to our road shows what we do is we actually have webinars as well we
have had webinars on how to file for example utility model patents in China
we are doing a webinar pretty soon coming up in a probably a
few months on design patents in China we have had webinars on enforcing your
rights using the administrative enforcement system in China China has
several ways to enforce your rights one of them is called administrative
enforcement system which is a less costly way of enforcing your IP rights
in China the most commonly used way and so and we also have a saw webinar coming
up on trademark protection issues and filing trademark she’s because there’s a
new law that’s coming out and you trademark law so that is probably an
easier way for a lot of people who aren’t able to go to these cities these
webinars are just an hour or an hour and a half and you can just get on of course
obviously from your computer and we do feature speakers we actually have had
speakers that have been beamed in from China
these are attorneys and experts in the area so that is an alternative and if
again if you look at our website we’ll kind of advertise that information about
some of our upcoming webinars right now we have several upcoming Rose shows but
we don’t have yet an upcoming webinar but our next one is probably going to be
about design patents so I would just you know get on our web in fact of the the
site that you have here if you get go on the the upcoming events
you’ll see in an upcoming events the ones that we will have upcoming Thank
You Elaine so in addition to those webinars on the USPTO website there are
a number of distance learning courses I think we’re constantly seeking to
improve those resources and and also working to keep them up to date so I
would say if you don’t see the type of material that you’re looking for please
let us know and stay tuned because that’s something that were continuously
striving to offer because not everyone has the time and resources to travel to
where we happen to be providing the training are there other questions yes I
have a question so I’ve been tracking some a lot some of these larger
companies like Louis Vuitton Chanel Gucci where a lot of foreign companies
or organizations are making their knockoff products and selling overseas
or here in the US so when someone mentioned up there about the 337 action
I’m trying to figure out how does that protect me or does it block the company
who’s making these dupes or fake products that would be a replica of mine
does it stop them from advertising doesn’t stop them from shipping over
here to the US what does that do as far as that mini-trial
out what does it stop them from doing thank you Dorian want to continue sure
now with regards to 337 actions and maybe I’ll just make it a bigger more
broader comments because 3-3-7 actions are generally for patents that a rights
holder might have if you have a trademark or a copyright those can be
enforced by the by by CDP by customs border production at the border and in
order to get that sort of protection one should take their trademark which they
already have registered with the USPTO and then record it with US Customs to
record it with US Customs you can do that online that fee is $190 and it can
be found at IP I IPR CBP govt so it’s intellectual property
rights record ation and once that trademark is recorded with
US Customs then they will be on the lookout to see if anything infringing
your trademark comes across and then it will be seized now with regards to
patents US Customs doesn’t have the expertise to make that assessment on
whether to products infringe each other regarding their the patent production
because of the nuances and the kind of particularity and regarding novelty and
and other elements so therefore the US has established a system with the
international trade commission whereby as a rights holder of a patent you can
apply for an exclusion order and in those instances you would present what
your patent is and also what the other patent is that you’re looking to explore
sorry the other product you’re trying to exclude at the border looks like and if
it’s a particular product you’re looking at excluded you would explain how in the
in the litigation process with with it before the eitc on the similarities and
and how there is an infringement in that instance if it’s a specific product then
the then the Commission will issue a limited exclusion order and that little
head exclusion order then gives authority for US Customs to stop
products that infringed our product at the border regarding patent rights also
the ITC can issue a general exclusion order which is more broad to give even
even broader protection regarding your patent rights so there are two different
systems one is regarding trademarks and copyrights which is more streamlined and
then more nuanced program with the ITC regarding patent protection at the
border thank you are there other questions yeah thank you
I’ve just got a quick question here I heard you guys talk about the Chinese
the tache office in there and I’m trying to understand what the benefits aren’t
working with them locally as compared to going through PCT can you elaborate just
a little more in depth about what the benefit would be of working locally with
your people as opposed to going through the PCT the reason why I say this I have
extensive training with WIPO and they have advanced systems for translation
of documents and other things I’m just trying to just understand what benefits
you could put you could potentially provide that might be superior to their
services okay just just to make sure I really understand the question is it
what’s the advantage to filing a u.s. patent application versus a patent
cooperation treaty application given the the PCT application is more readily
translated I guess if you have a local attache office there I would be working
with them right okay so that would be filed locally in that country right yeah
so maybe I’ll take this one if my mic is working the the anti-shake doesn’t
really I mean if you’re interested in filing for patent protection in China
you can either file through the PCT if you’re seeking to protect through a
broad group of countries if you wanted to protect just in China
you would file through CNI PA or the Chinese intellectual property office the
anti she is there is an additional resource so if you have questions about
how the process works how the Chinese laws work you can ask the attache but
really you would be filing your application not with the attache but
with the Chinese office or through the PCT system but the think of the IPO – a
as an additional resource to you who can do different things they can provide
information or they can provide other assistance
you know sometimes helping you to develop a strategy sometimes helping you
to maybe to find the right authorities you know to to contact if there’s a
problem but they’re not the ones who are going to file your patent application
and they’re not the ones who are going to represent you legally you’d have to
hire an IP lawyer to do that is that is that clear okay thank you and if I may
make one more comment we’ve heard Elaine made a very helpful presentation about
role the China team and Dorien explained very helpfully what the enforcement team
does and just to tie it all together within OPI a Karen explained what OPI a
does but we have a team trademark team copyright
enforcement and then we have and although substantive teams also are
organized into regional teams and the regional teams work with the attache so
when you work with the team you can work with the attache and if you work with
the attache you can work with the team but it ultimately has more resources for
you thank you I did want to just make sure that before anyone files in a
foreign country if for some reason they’re deciding not to file in the US
you do need to get a foreign filing license before you file on that foreign
country otherwise if you do subsequently try to get a u.s. punch you will find
that patent to be unenforceable so please when you file a u.s. application
automatically as part of that you will be considered for a foreign filing
license but if you choose to go directly into China and bypass filing in the u.s.
you have to come to the US Patent and Trademark Office first
and request a foreign filing license so just to make sure that everyone is aware
of that I’m a little bit worried that we’re running low on time to eat sorry I miss most apresentava because
one I mean it’s like conflictive is 101 session so I want hopefully this is a
good question Hubbell I and so I just wonder you know
like filing patent in each each individual to rosetta Gatien US China
Europe I think I will help you protect serving in the market
manufacturing in the market does that in terms of supply chain does that go
impact upstream or downstream I mean in term of the supply chain in that
particular market I guess so at the very beginning and perhaps you did mention
that what I was trying to make sure everybody understands and I’m glad we’re
kind of beginning and ending at the same point as a US patent protects you and
the US China’s a Chinese pound protects you in
China uni if you’re going to be in both markets you need to have protection in
both places similarly trademark protection you want to make sure you’re
getting that because these rights are a territorial you need to make sure you’re
getting the rights in any territory where you need to be protected so if
your supply chain is jumping around to other countries if it’s going to India
Indonesia seek to see what the appropriate protection is you may need
different types of protection you may need a method of manufacturing patent in
one country and a different type of patent or coverage in another country
does someone want to round that answer out all right well I’d like to thank our
panel thank you for coming today we appreciate your time at this time we are
closing out the session for the day the booths will remain open until 6 o’clock
if you wanted to see anybody at one of the booths before you go please remember
to return your surveys on your way out and remember to sign in in the morning
when you return thank you everyone!

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