March 9, 2015 H. David Starr Nath, Goldberg & Meyer
Patents Designs Trade Secrets Trademarks Copyrights Nath, Goldberg & Meyer 2
Cross-Licensing/ Litigation Mgmt. Entry & Development of Export Markets Licensing Royalties Tax Advantages Foreign Manufacture Protection of Process Advantages Defensive, i.e. ability to operate Exchange for Equity Assurance for Business Partners or Potential Investors Raising/Securing Capital Nath, Goldberg & Meyer 3
A tool for protecting your invention(s) Resources required: Two-Five Years and $10,000-$40,000 per case per country No right to enforce until issuance of patent (same for utility models and designs) Damages may accrue with publication Nath, Goldberg & Meyer 4
Duration: 20 years from earliest filing Exclude others from making, using, selling, importing Any mechanical, electrical, or chemical invention, process, improvement Must be kept secret Must be novel, useful, non-obvious Priority claim: 1 year to file abroad Nath, Goldberg & Meyer 5
NOVEL means NEW (35 U.S.C. 102) Each and every claimed feature, in the proper order, not found in prior art (public domain) USEFUL (35 U.S.C. 101) Specific and credible NON-OBVIOUS (35 U.S.C. 103) No combination of art INVENTIVE STEP (NON-U.S. STANDARD) Problem-Solution approach Nath, Goldberg & Meyer 6
Paris Convention for the Protection of Industrial Property Patent Cooperation Treaty (PCT), WIPO Regional Filing/Examination (Europe, Eurasia, Africa) Individual countries Nath, Goldberg & Meyer 7
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International Application Flowchart Using the PCT Nath, Goldberg & Meyer 9
European Patent Community Novelty, Inventive Step, Clarity, Industrial Use First to File Need to perfect in each member country--registration only, Opposition at EPO Validity, Enforcement locally Japan Novelty, Inventive Step, Industrial Applicability First to File Opposition, validity at JPO
Canada First to file Novelty, limited exam Israel First to file Novelty, Optional exam Mexico First to file Novelty, limited exam Taiwan First to file Two-phase exam Amendable application India First to file 7 year patent China First to file Limited exam, good scope
Annuity or maintenance fees must be paid to avoid patent abandonment: U.S. maintenance fees due 4, 8, and 12 years after patent grant Brazil and Europe annuity fees due every year starting 3 years after filing Canada annuity fees due every year starting 2 years after filing
Many countries have utility model option May be based on US patent and PCT available Limited to physical objects Registration only, no substantive examination, rights proved in Court (no presumptions) Quicker, cheaper, limited in duration (10 years) Gives notice to third parties (markings)
Duration: 14 years from grant Any new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features. Visual ornamental characteristics embodied in, or applied to, an article of manufacture Exclude others from making, using, selling, importing Priority claim: 6 months Nath, Goldberg & Meyer 14
Coffee Press Cork Holder Vacuums Food Containers Cellphones Nath, Goldberg & Meyer 15
PCT not available Community design valid in entire EU Country-by-Country Often limited substantive examination 1-2K per country
Duration: until publicly known No registration system State by State; no civil Federal Enforcement Federal Criminal Enforcement Definition: Any information giving a business an advantage where reasonable measures are taken to keep it secret and it is not generally known to the public Nath, Goldberg & Meyer 17
The connection in the mind of the consumer between mark and product Protects the use of a mark on goods or services used in commerce (US) Scope of US rights determined by nature of use Scope of rights abroad determined by registration Lasts as long as it is used/registration remains in force Nath, Goldberg & Meyer 18
Any word, symbol, 3-D figure, color, sound, smell, product packaging, product design (trade dress) Nath, Goldberg & Meyer 19
Work of authorship fixed in tangible form Term: Life of Author + 70 years for persons For Hire, Anonymous, Pseudonym, lesser of 95/120 years from date of publication/creation Registration and notice not mandatory, but highly advisable Protects original expression, not ideas
Music Visual Art Video and Film Textual works Databases Architecture Software code Nath, Goldberg & Meyer 21
What is being protected Nonfunctional limitations Creation/Exist Term Length International Rights Nath, Goldberg & Meyer 22
Paris Convention for the Protection of Industrial Property Regional Protections (BeNeLux, CTM) Madrid Trademark Protocol Country by Country Berne Convention Nath, Goldberg & Meyer 23
International Treaty administered by WIPO Simple vehicle to obtain and maintain registration of trademarks in multiple jurisdictions through a single trademark office Step One: Secure International Registration based on country of origin application or registration Step Two: Extend National Filings based on IR for examination and possible opposition
Members of the Madrid Protocol: Over 90 contracting parties generally, Europe, most of Asia, Australia, United States, Mexico Visit www.wipo.int for updated list Notable non-members Canada South and Central America
A bundle of national / regional rights Initially with same list of goods / services WIPO may object to wording of goods / services before IR is sent to national offices Further objections / refusals possible on national level
Centralized filing procedure Potentially significant savings Simplified filing requirements (no power of attorney or translations) Simplified maintenance, renewals, assignments, recordals Transformation into national filings Priority for extensions filed within six month of application
Central attack and mirror effect: IR mirrors home application / registration Attack on home mark within first 5 years of date of IR results in same limitation / cancellation of protection in countries designated under IR IR does not become independent of home registration until after five years
Requirement for assistance of local agent if objections arise during prosecution or in the context of opposition proceedings may reduce savings
Minimum recommended: Full availability search before filing in home country, to determine if the trademark appears available for use and registration Screening search direct hit / identity search in each other country of interest
Coined expressions are preferable, as more likely to be inherently registrable Descriptive / generic terms may result in objections and eliminate the cost saving advantage Consider waiting for home application to clear opposition period before filing international application (risk of central attack) If applicant requires single brand in all designated countries, multiple potential marks are recommended because unlikely that one mark will be accepted everywhere
May not want to use European Community trademark application as home application (heightened risk of opposition) US applicants may prefer national or regional route in order to expand scope of protection of mark (more limited base mark)
Thank You H. David Starr dstarr@nathlaw.com Nath, Goldberg & Meyer 112 S. West Street Alexandria, VA 22314 703-548-NATH (6284) 2015 Nath, Goldberg & Meyer Nath, Goldberg & Meyer 33