Stop Trade in Fakes!

1. Stop Trade in Fakes! Helping Businesses Protect Their Intellectual Property

2. Why care? • Counterfeiting accounts for 5% -7% of global merchandise trade, lost sales of $600 billion in 2005 • Small business is especially vulnerable: • Lack other product lines to fall back on • Lack financial resources • Liability hazards

3. What is Intellectual Property? • Intellectual Property Rights (IPR) are Private Rights • Legal protection for an investment • Protection provided under national legislation and international agreements

4. Patents • Protects a new and useful process, machine, article of manufacture, industrial design • Criteria: • Novelty, Usefulness, Non-obviousness • Territorial

5. Trademarks • A trademark or service mark is a word, phrase, symbol, or design or combo of these things that identifies and distinguishes one source of goods from others • Territorial

6. Copyrights • A Copyright is a form of protection provided under US law to the authors of “original works of artistry” • Copyright is available for all works at the point that the work is in any tangible form • BUT: there may still be reasons to register with the U.S. Copyright Office

7. Discussing IPR • Whether to obtain IP protection is a business decision • When to consider: • Prior to new product development • Prior to exportation

8. Discussing IPR • Discuss the business decision: How important is IP to your business model? • Can your goods or services be copied or imitated? • How could counterfeiting, piracy, or infringement affect your business?

9. Discussing IPR • What is the risk that you could be the victim of infringement, counterfeiting, or piracy? • Do you plan to export goods/services overseas? • Do you plan to manufacture overseas? • Do you plan to purchase supplies overseas? • Do you attend international trade shows? • Do you sell via the internet?

10. Discussing IPR • Where to consider IP? • IP rights are territorial • Consider IP in countries where companies wish to produce, sell, or market their products now and in the future • What is the IP climate of the countries where you intend to do business? • Special 301 Report • National Trade Estimate

11. Helping your business obtain IPR Protection in the U.S. Apply for a Patent or register a trademark: Register a copyright:

12. Helping your business obtain IPR Protection Abroad • Register in current and potential markets. • http://www.wipo.int/portal/index.html.en • International registration: • Madrid Protocol for trademarks • The Patent Cooperation Treaty • Resources: • www.stopfakes.gov • Toolkits: China, Korea, Taiwan, Mexico, Russia

13. Helping your business enforce their IPR at Home • Record trademarks and copyrights with U.S. Customs and Border Protection http://www.cbp.gov/xp/cgov/import/commercial_enforcement/ipr/ipr_enforcement/ • Suggest your client speak with an attorney regarding a civil or administrative action for relief for known infringements • Section 337 Exclusion Order • Alert U.S. authorities of infringements that are large scale or for criminal purposes http://www.ice.gov/graphics/cornerstone/ipr/

14. Helping your business Enforce their IPR Abroad • Right holder has responsibility • Commerce can provide guidance • www.export.gov/ • IP experts can suggest strategies to evaluate IPR problems • 1-866-999-HALT • www.stopfakes.gov

15. Helping your business Enforce their IPR in China • 3 R’s: Register, Record, Remedies • USG can help: • Companies navigate through China’s legal system • Provide list of attorneys and/or consulting firms • Monitor and inquire about case status Resource: China IPR Toolkit

16. Helping your business Enforce their IPR in China • One-hour consultation • introl@staff.abanet.org • 202-662-1034 • ELAN: http://www.export-legal-assistance.org/

17. Other Steps to Consider • Work with legal counsel to develop an overall IPR protection strategy • Develop detailed IPR language for licensing and subcontracting contracts • Conduct due diligence of potential foreign partners

18. Resources to Assist Your Business • STOP! Strategy Targeting Organized Piracy • www.stopfakes.gov • 1-866-999-HALT • Speak to trade specialist about company problems • File a complaint • Request assistance • www.uspto.gov

19. Resources to Assist Your Business • USPTO Seminars • February 27-28: San Diego, California • March 2-3: Atlanta, Georgia (China seminar) • March 27-28: Northern Virginia • May 15-16: Columbus, Ohio • Speakers for workshops, roundtables

20. Resources to Assist your Business • International Trade Show Initiative • Raise Awareness of IPR • Outreach and Education • Support IPR Protection • Enlist organizer support • Benchmark best practices • Encourage organizers & exhibitors • Take care of our own backyard

21. Resources to Assist Your Business • Trade Compliance Center/ Office of IPR: Ensuring companies benefit from U.S. trade agreements • Our objectives are to: • Ensure that foreign countries comply with their trade commitments • Help American firms facing foreign trade barriers and unfair trade practices • Inform American firms about their rights • www.export.gov/tcc

22. Resources to Assist your Business • Helping Companies Fight Back, Case by Case • Identify unfair treatment • Form a compliance team • Apply agreement analysis • Craft an action plan • Work with other government agencies and our embassies if necessary • Raise the issue with appropriate authorities to resolve the problem.

23. THANK YOU! Cassie Peters International Trade Specialist Intellectual Property Rights Market Access and Compliance U.S. Department of Commerce Catherine.Peters@mail.doc.gov (202) 482-6276