IP and International Trade Kazuyuki Motohashi Department of Technology Management for Innovation, University of Tokyo

Outline IP Panorama Chap 9 –TochNGO case: trademark issues, contract in case of production outsourcing International IP application procedure Internationalization of patent applications Concluding remarks

International IP Application Territoriality of IP protection Domestic application Regional application (ex. EPO, OHIM) International application –Paris Convention: Keep its domestic application date as “priority date” of international application within 1 year (for patent, utility models) or 6 month (for trademark and design)

PCT (Patent Coordination Treaty) JAPAN PCT App. 1 year 30 months Domestic App. App. to A with translation App. to B with translation App. to C with translation * Madrid Protocol : Same kind of rule applied for trademark

Patent application by major countries

Share of domestic application by country

US patent: Top 10 companies

Patent application in China by applicant’s nationality

Patent application in China by technology and cnoutry

Patent application flows Japanese firms US firms Chinese (firms Individual academic)

Implications What could be done by TochNGO? –Trade mark and patent search in Tostralia –Paris convention? –Appeal for invalidation/revocation? –No way for stop imitation (needs IP) Reality for small firms –Can you go to court for infringement case? –Careful consideration of production outsourcing decision (“black box” approach, if necessary)