1. Unit 3 Seminar International Issues in IP Law

2. Unit 3 – International Issues in IP Law Unit 3 will focus on Chapters 8, 16 & 21 –Make sure to download the Chapters via Doc Sharing Three (3) items to complete in Unit 3. They are: –Unit 3 DB (16 points) One (1) topic only –Unit 3 Quiz (20 points) –Attend Unit 3 Seminar (4 points) Let’s discuss (Chapter 8).

3. Chapter 8 – International Trademark Law: Securing Trademark Protection in Foreign Countries One of the first treaties or “conventions” designed to address trademark protection in foreign countries was the Paris Convention of 1883 which was adopted to facilitate international patent and trademark protection. –Based on the principle of reciprocity –Most significant benefit: priority –Text of the Paris Convention is: http://www.wipo.orghttp://www.wipo.org As we learned in last week’s seminar, once a decision has been made to adopt a mark, consideration should be given to whether the mark should be applied for in any foreign countries. –Consider the meaning of the mark in various foreign languages. (i.e. Chevrolet’s NOVA)

4. Chapter 8 – International Trademark Law: The Foreign Application Just as foreign applicants can file an application with the PTO and claim priority based on a pending foreign application, so too can U.S. applicants claim such benefits afforded by the Paris Convention. –Trademark owners considering expansion should file trademark applications in any countries they anticipate they may do business. –Because use is not required to secure a registration in many countries, third parties often attempt to register marks “trademark pirates” “copycat marks” The progress of an application filed in a foreign country varies dramatically based upon the country. –Some countries do not recognize service marks.

5. Chapter 8 – International Trademark Law: The Foreign Application The nature & type of examination of an application pending before a foreign trademark office varies greatly, with some countries subjecting the mark to strict scrutiny and issuing refusals similar to the office actions issued by the PTO, while other countries merely review the form of the application & then issue a registration unless there is a prior identical mark. –Registrations usually valid for 10 years. –Owner may allow another or grant license. If this occurs most countries require registered user agreement to be filed as well. The European Community Trademark –Question: What is the CTM?

6. Chapter 8 – International Trademark Law: The European Community Trademark In 1996, a new Community Trademark System (CTM) was established by European Union. –Initially started with 15 member countries; 2004 – 10 new member states were added; 2007 – 2 new member states added; total today = 27. –Primary European trademark office located in Alicante, Spain. –There is no requirement to be domiciled in any EU member nation or to have actually used the mark anywhere in order to file a CTM application. –Distinct advantage: There is no need to perform a search prior to filing the application. The Madrid Protocol: –Question: What is the purpose of the Madrid Protocol?

7. Chapter 8 – International Trademark Law: The Madrid Protocol In 1996, at the instigation of the World Intellectual Property Organization (WIPO), the Madrid Protocol came into existence. –Allows trademark protection for more than 30 countries and all of the European Union countries by a single trademark application. –2003: U.S. became a party to the Madrid Protocol. –Each country conducts a substantive examination of the application and each has the independent right to refuse protection. –Only effective in those countries where the application was not refused or successfully opposed. –Registration valid for 10 years & has one renewal date. Effects of New International Agreements (NAFTA & TRIPs) –Question: What is the WTO and how does it relate to TRIPs?

8. Chapter 8 – International Trademark Law: International Associations There are a variety of international associations devoted to protecting the rights of trademark owners. The best known are: –International Trademark Association (INTA) –World Intellectual Property Organization (WIPO) Question: What is the purpose of each one & how do they differ?

9. Chapter 16 – International Copyright Law Nearly 1 million books and other literary titles, 5,000 features films, and 3 million songs are published worldwide each year. YET there is no such thing as “international copyright” that will protect an author’s work throughout the world. Protection is generally afforded on a country-by-country basis. However, most countries offer protection to foreign works under international conventions and treaties. Question: What are the two (2) principal international copyright treaties/conventions that offer protection for copyright?

10. Chapter 16 – International Copyright Law The two (2) principal international copyright treaties and/or conventions offer protection for copyright are: 1. The Berne Convention for the Protection of Literary & Artistic Property (Berne Convention) 2. The Universal Copyright Convention (UCC) Question: What is the purpose of each one & how do they differ?

11. Chapter 21 – New Developments & International Patent Law New developments in Patent Law relate to the increased number of patent applications filed for: –Computer software –Medicine –Science –Pharmacology –Business method patents –New varieties of seeds and agricultural food products Unfortunately the rights granted by a U.S. patent extend ONLY throughout the United States & have no effect in a foreign country.

12. Chapter 21 – New Developments & International Patent Law Therefore, an inventor who desires patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. –Directory of more than 100 foreign patent offices can be found at: http://www.piperpat.co.nzhttp://www.piperpat.co.nz Also, there are several international patent treaties to which the U.S. adheres to. Question: What are the three (3) patent treaties that U.S. adheres to?

13. Chapter 21 – New Developments & International Patent Law The three (3) patent treaties that U.S. adheres to are: 1. The Paris Convention 2. The Patent Cooperation Treaty 3. The Agreement on Trade-Related Aspect of Intellectual Property Rights. Question: What is the purpose of each one & how do they differ?

14. Unit 3 Seminar Wrap Up A copy of the PowerPoint presentation will be located in Doc Sharing. Be sure to participate in the Unit 3 DB (one topic) Let’s review for the Unit 3 Quiz