Paradise Point Resort & Spa San Diego, CA October 19-21, 2011 Patenting Protein Therapeutics: In the Shadow of Uncertainty 4th Protein Discovery and Therapeutics.

Paradise Point Resort & SpaSan Diego, CA

October 19-21, 2011

Patenting Protein Therapeutics: In the Shadow of Uncertainty

4th Protein Discovery and TherapeuticsGlobal Technology Community

Klarquist Sparkman, LLP121 S.W. Salmon Street, Suite 1600

Portland, OregonFebruary 11, 2013

Domestic and Foreign Intellectual Property

Enforcement

AKTI Counterfeiting Round Table

Speaker:Jeffrey Haendler

Klarquist Sparkman, LLP

Agenda

• Filing U.S. and foreign trademark applications.

• Enforcement strategies for China and websites.

• Filing U.S. and foreign patent applications.• Patent types in China.

Klarquist Sparkman, LLP ©2013


What is a Trademark or Service Mark?

• A word, phrase, symbol, sound, color, smell, etc. that can identify the source of the goods or services



Types of Trademark Rights


• Common Law Marks• US Federally Registered Marks (or based on

pending applications to register a mark)• State Registered Marks • Foreign Priority Rights • Foreign Registrations


Registered Marks


• US Federal Use Applications for Registration– require actual use in interstate or foreign commerce

• Federal Intent-to-Use Application– require a bona fide intent to use the mark in interstate or foreign

commerce

• State Registration– Most (e.g. Oregon, Washington) but not all (e.g. Vermont,

Wisconsin) require actual use


Benefits of National Registration

• National Geographic Rights– Nationwide – so preserves registrant’s right to expand.

– Provides constructive notice to 3rd parties: bars defense of good faith subsequent adoption, BUT this does not mean that subsequent use is in bad faith

– Third parties who acquired common law rights in a remote area before registrant applied cannot extend those rights after the application date.



Benefits of National Registration

• Nationwide Priority From Filing Date– Constructive use and priority against subsequent uses as of the

filing date.

– Third parties cannot acquire rights by commencing use after the filing date

• Prima Facie Evidence of Distinctiveness and Validity– Rebuttable presumption for first 5 years. “Incontestable” after 5

years.



Protecting Trademark Rights in Foreign Countries

• Most foreign countries do not recognize common law trademark rights (e.g., China)

• Most foreign countries require trademark registration to enforce trademark rights



Types of Foreign TM Applications

• National application filed directly in foreign country

• Community Trade Mark application- covers EU

• Madrid Protocol (international) application– Single filing; pay fees for designated countries– Includes China, EU, Korea, Japan– Does not presently include Taiwan, Hong Kong, South Africa



When to File Foreign TM Applications

• Most foreign countries recognize filing date of U.S. application as effective filing date if foreign application filed within six months of U.S. application.

• For important trademarks, file foreign applications within six-month window



Dealing with TM Applications Filed by Others

• Counterfeiters may file foreign application if owner does not file foreign application within six-month window

• Send cease and desist letter• File TM opposition with foreign Trademark Office

(usually a set time limit after application published)• Need to show bad faith• Going rate is about $10,000 to settle opposition in

China• File lawsuit (expensive)



Enforcement in China

• Register trademark first• Request local Administration for Industry and Commerce

(AIC) to take enforcement action to seize goods (more common than lawsuits, but damages probably not available without lawsuit)

• Costs for investigating a target : $2,400-$3,200• Cost for sending cease and desist letter and some follow up:

$1,600 or more if English translations are required• Cost for requesting AIC to conduct a raid action: $4,000-

$5,500.• Additional attorney fees for ongoing advice.



Enforcement in China

• File lawsuit• Cost for lawsuit: $24,000 and up• Record registered trademark with General

Administrations of Customs (GAC). GAC can seize counterfeit products declared for export.



Monitor Third Party Websites for Counterfeits

• Routinely monitor third party websites like Ebay, Amazon, Alibaba

• File take down notices• Some may require proof of registered

trademark (no common law rights)• Work with foreign agent to file take down

notices with foreign language websites



Counterfeiter Websites

• Check to see if website is registered with U.S.-based registrar (www.betterwhois.com).

• File take down notice or send cease and desist letter to registrar.


http://www.betterwhois.com/


Utility Patents

• Protects process, machine, product, or composition of matter. Lasts 20 years from filing date.

• Foreign applications must be filed within 12 months of U.S. application to claim priority.

• PCT (international) application available; must be converted to national stage applications.

• Absolute novelty in foreign countries (file in U.S. before invention made public)

• Probably not cost effective strategy against counterfeiters.



Design Patents

• Design patent- the new, original, ornamental design, configuration, shape or outward ornamental appearance of a useful product.

• Lasts 14 from issue date.• Much less expensive than utility patents.• Examples:



Design Patents in Foreign Countries

• Foreign applications must be filed within 6 months of U.S. application to claim priority.

• Novelty rules vary country to country- file U.S. application before invention made public.



Patent Types in China

• Invention – equivalent to utility patent (20 years)

• Design (10 years)• Utility model – no U.S. equivalent (10 years)



Chinese Utility Model

• No substantive examination until enforcement• Available only to products with features of shape and

structure• Faster, cheaper to get• Lower threshold on inventive step (non-obviousness)• Difficult to be invalidated• Same applicant, same day files utility model & invention

application– allowed to abandon granted utility model and get patent for invention– extend time period during which enforceable right is available

• To enforce, evaluation report required from Patent Office



QUESTIONS?

Jeffrey HaendlerKlarquist Sparkman, LLP

121 SW Salmon Street, 16th Floor Portland, Oregon 97204 Phone: (503) 595-5300

[email protected]


Paradise Point Resort & Spa San Diego, CA October 19-21, 2011 Patenting Protein Therapeutics: In the Shadow of Uncertainty 4th Protein Discovery and Therapeutics.

Documents

services klarquist sparkman

foreign application

foreign countries

foreign trademark applications

llp agenda filing

foreign patent applications

filing date of

actual use slide