Protecting Intellectual Property Around The World 6 th Annual The Security Summit Mitchell P. Brook Partner, Luce Forward

Patents – Technology Water tight seals Computer Software Electronic Controls Trademarks – Brand 777 COKE INTEL

Copyright – Written work, music, art Books Movies Software Code

PATENTS WHEN? Before public introduction US: 1 year grace period Europe: No grace period – absolute novelty bar

PATENTS WHERE? Step 1: Initial Application One country – Typically home country Export License – comes with patent filing receipt Step 2: International One year to file in Paris Convention countries. PCT alternative – increase costs, but delay larger individual country costs up to months.

Countries: Most popular for patent filing: United States European Patent Office Japan Canada Australia China … Increasing PATENTS

PATENT TIMELINE SUMMARY: 1. Develop Invention. 2. File first patent application before public disclosure. 3. Within 12 months, begin international process. 4. Patent granted, 1- 4 years.

COSTS: Patents can be very expensive, and take long periods from date of initial application to patent grant. Short-Product Cycles: Consider NOT filing patent application. Cost v. marketing advantage Initial Patent Application Foreign Applications: Translation Required – Translation costs can be expensive. No Translation Required – reduces costs PCT: No translation required until national stage filings PATENTS

EXAMPLE: Technology: A new bicycle seat clamp. Make Invention: May 2009 Develop Invention: May 2009-May 2010 Marketing Dep’t signs up to Display at Bicycle Manufacturer Convention: October 2010 Contact patent attorney sometime between May 2009 and September 2010 – earlier the better. Draft patent application, revise and file in US Patent Office – September 2010 Test marketing and market assessment: October 2010-August 2011 Foreign filing decision – Yes or No – August 2011 File Foreign Applications – No later than September 2011 – 1 year after initial filing PCT v. Direct Filings

INFRINGEMENT Scenario: Successful new technology copied by in low- cost manufacturing country (China, Taiwan, Mexico etc.) i. China Strategy: “I do not want to talk to manufacturers in China because they will not respect patent rights” Can enforce in China. File patent application in China? Use Major Market Blocking Strategy.

INFRINGEMENT ii. Do you have a patent in the country of manufacture? Yes? Can sue in country of manufacture. No? Cannot sue in country of manufacture.

INFRINGEMENT iii. Major Market Strategy File patents or trademarks in the major markets, such as U.S., Europe, Japan, Canada. Can block importation via Customs Service. Can block sales via Courts or International Trade Commission.

TRADEMARKS Branding – Important if the brand will distinguish the product. First to File Rule: Not United States or Canada, but most other countries. When? Anytime. Advantage to file before product introduction – inhibits piracy

TRADEMARKS International Filing: 6 months after initial trademark application European Union – Community Trademarks Office

Mitchell P. Brook Partner El Camino Real Suite 200 San Diego, CA P: F: Mitchell Brook regularly handles complex patent and trademark matters including developing patent and trademark strategies, preparing and prosecuting U.S. patents, trademarks, and foreign equivalents, technology licenses and other transactions. Mr. Brook represents established companies, as well as emerging companies, on strategic issues concerning technology enforcement, development and branding. He has handled litigation and licenses with combined values exceeding $1 Billion. His areas of expertise also include patent and trademark protection in the U.S. and other countries. He has an international perspective with expertise in in emerging and established markets.