American Intellectual Property Law Association
Presentation for
China State Administration for Industry and Commerce
James E. Ruland
The Law Office of James E. Ruland, P.L.C
P.O. Box 392
Falls Church, VA 22046
james.ruland@rulandlaw.com
December 4, 2009
Based on a Presentation by
William S. Boshnick of
Greenblum & Bernstein, P.L.C
Overview of Organization of U.S.
Law
Legislative Branch (U.S.C.)
• Congress Makes the Laws
Executive Branch (C.F.R.)
• President Executes the Laws
Judicial Branch
• Courts Interpret and Enforce the
Laws
December 4, 2009
Overview of Organization of U.S.
Law
Federal Court System
•
•
•
•
District Courts
Courts of Appeal
Supreme Court
Similar State Court Structure
 Trade Secrets
 Rights of Publicity
Regulatory Agencies
• United States Patent and Trademark Office (USPTO)
• Library of Congress (Copyright Office)
• International Trade Commission (ITC)
December 4, 2009
Intellectual Property
Intangible Property
• Applied Ideas  Patents
• Fixed Works of Authorship  Copyright
• Commercial Sources  Trademark
December 4, 2009
Patents
专利
Patent Law
U.S. Government Grant
• Right to exclude others
• Not a right to do (or make) something
• Not a Natural Right
Limited Right
• In Time and Scope
• Violation of Right is Infringement
December 4, 2009
Patent Law
Provided in the United States Constitution
(est. 1787)
Congress has the power “to promote the
progress of Science and useful Arts, by
securing for limited times to Authors and
Inventors the exclusive Right to their
respective Writings and Discoveries.”
Article 1, Section 8, Clause 8
December 4, 2009
Patentability of Invention
Useful: “Any new and useful process,
machine, manufacture, or composition of
matter, or any new useful improvement
thereof, may obtain a patent therefor…”
(35 U.S.C. § 101)
New (35 U.S.C. § 102)
Nonobvious (35 U.S.C. § 103)
December 4, 2009
Unpatentable Subject Matter
Algorithms
Mental processes
Mathematical formulas
Phenomena of nature
Fundamental truths
December 4, 2009
Patent Application
An application is usually prepared by an
attorney or agent who is admitted to practice
before the United States Patent and Trademark
Office (USPTO), but inventor may apply on his
own (pro se).
Types of patents:
• Utility patent
• Design patent
• Plant
December 4, 2009
Prosecution
Average time from filing to first examination
in PTO:
• 1.5 - 5 years (depending on the type and
field of the application), sometimes
longer
The delay in processing applications is
expected to increase due to the huge
application backlog in the PTO
December 4, 2009
Issuance
For utility applications filed on or after June 8,
1995, the patent term is generally 20 years
from the filing date, or any earlier filing date
claimed under 35 U.S.C. § 119
20 years
December 4, 2009
Enforcement
Patent claims define scope of invention
Right to exclude others
Notice by patent marking
December 4, 2009
Copyrights
著作权
©
Copyright Law
1. Government Grant
• Like Patent, Not a Natural Right
• Constitution
2. Limited in;
• Extent
• Time
• Generally life of the author +70 years
• Scope
December 4, 2009
Copyright: Laws and Rules
Constitution
Statutes – Title 17 United States Code
Rules – Title 37 Code of Federal
Regulations §201
Federal Law
• Cases, Precedence
December 4, 2009
What is a Copyright?
Authors of “original works of authorship”
Exclusive rights, 17 U.S.C. § 106
• Reproduce Copies of Works
• Prepare Derivative Works
• Perform and Display Certain Works
Limitations, 17 U.S.C. §§ 107-121
• Fair Use
• Reproduction by Libraries
• Reproduction for Blind and Disabled
December 4, 2009
What is a Copyright?
Must be fixed on a tangible medium
Original or independent authorship and…
Some minimal level of creativity
Feist Publications, Inc. v. Rural Telephone
Service Co., 499 U.S. 340 (1991)
December 4, 2009
What Exclusive Rights are Given
to Authors?
Right to Exclude Others
• From protected expression
• Not from idea or concept
Enumerated in 17 U.S.C. § 106
Limited by various compulsory licenses and
exemptions in 17 U.S.C. §§ 107-121
December 4, 2009
Fair Use Limitation
17 U.S.C. § 107
Use does not infringe if for purposes of
•
•
•
•
•
•
December 4, 2009
Criticism
Comment
News reporting
Teaching
Scholarship
Research
Enforcement
Must Demonstrate
1. Ownership of a valid copyright, and…
2. Copy of the original, whole or in substantial
part
Direct Infringement
• Direct Evidence

Admissions, secret codes copied
• Circumstantial evidence


December 4, 2009
Access
Substantial similarity
Trademarks
商标
Trademark Law
1. Commercial Right
2. Limited Right
• Scope
• Indefinite in duration if in continuous use
December 4, 2009
Public Policy
Protection of Commerce
Consumer
• Prevent deception and confusion
• Source of goods trusted
Manufacturer
• Identification of their goods
• Prevent diversion of customers
Competitors
• Prevent undue monopolization of effective symbols
and signs
General Public
• Reward producers of goods
• Minimize consumer deception
December 4, 2009
Trademark: Laws and Rules
State Laws
Federal Statutes (15 U.S.C.)
• Lanham Act
• Antidilution
Rules
Guidelines
• Trademark Manual Examination Procedure
December 4, 2009
What are Trademarks and
Service Marks?
Trademark is any word, phrase, symbol or
combination thereof which is used by a
manufacturer or merchant to identify its
goods and distinguish them from those
manufactured and sold by others.
Service Mark is any word, name, symbol or
combination thereof which is used in the
sale or advertising of services to identify
the services and distinguish them from
those of others.
December 4, 2009
Advantages of Promoting
Trademarks
Attracts Attention
Symbolizes quality and promotes goodwill
for the owner
Conditions consumers response to
automatically recognize owner
December 4, 2009
Trademark Enforcement
Registered Mark Infringement
• Confusion, mistake, deception
• Section 32 of Lanham Act
Violation of Section 43(a) of Lanham Act
• Confusion, mistake, deception or
• Misrepresentation
False Advertising
Common Law Actions
• Trademark, trade dress
• Unfair business practices
December 4, 2009
Summary: Intellectual Property
Patents: Strong Exclusionary Right, Cover
Ideas
Copyrights: Strong Exclusionary Right,
Cover Expressions
Trademarks: Strong Exclusionary Right,
Cover Marketing
December 4, 2009
Questions?
Special Thanks to William S. Boshnick of
Greenblum & Bernstein, P.L.C.
James E. Ruland
The Law Office of James E. Ruland, P.L.C
P.O. Box 392
Falls Church, VA 22046
james.ruland@rulandlaw.com
U.S. Intellectual Property Laws in
International Trade
AIPLA
Presentation
for
China State Administration for Industry and Commerce
Kevin C. Kunzendorf
Sughrue Mion, PLLC
2100 Pennsylvania Ave., NW
Washington, DC 20037
kkunzendorf@sughrue.com
Outline
Preventing intellectual property right (IPR)
problems in international trade
When IPR problems occur – U.S.
framework and options for addressing IPR
problems
Prevention of IPR Problems
Knowledge of the activity or product
Knowledge of target country’s legal system
and IP laws
• Team of advisors in target country
 Attorneys
 Business people
Prevention of IPR Problems
Understand what IPR exists in the target
country
• Search of relevant IPR databases
• Seek opinions from advisors
Negotiate licenses if necessary
IPR Problems – U.S. Framework
Alternative Dispute Resolution (ADR)
U.S. District Court
U.S. International Trade Commission
(USITC)
IPR Problems – U.S. Framework
Alternative Dispute Resolution (ADR)
• Seeks alternatives to litigation
• Neutral party facilitates communication
• Binding or non-binding
IPR Problems – U.S. Framework
Alternative Dispute Resolution (ADR)
• AIPLA Alternative Dispute Resolution
Neutral Registry
• WIPO Arbitration and Mediation Center
IPR Problems – U.S. Framework
Alternative Dispute Resolution (ADR)
• Advantages
 Relatively inexpensive
 Trained, neutral parties
 Can help initiate and sustain
communications
IPR Problems – U.S. Framework
Alternative Dispute Resolution (ADR)
• Disadvantages
 Parties may not be willing to submit to ADR,
specifically binding ADR
 Requires trust in the neutral party
 Effectiveness determined by willingness of
the parties to actively participate in the
process
 Even if successful, ADR may not completely
resolve the problem.
IPR Problems – U.S. Framework
U.S. District Court
• 94 federal judicial
districts
U.S. Court of Appeals
• 12 regional circuits
IPR Problems – U.S. Framework
U.S. District Court
• General trial courts
 Both civil and criminal matters
 Criminal cases have priority
 Civil cases can take a long time
IPR Problems – U.S. Framework
U.S. District Court
• Parties
 Plaintiff (the aggrieved party)
 Defendant (the importing party)
 District Court Judge
 Jury (?)
IPR Problems – U.S. Framework
U.S. District Court – key features
• Case initiated by filing a complaint, which is a formal
document submitted to the district court.
 Must show legal injury of plaintiff by defendant
(that is, infringement of plaintiff’s IPR by
defendant)
 May be problematic if trade goods are outside
U.S. or in transit
IPR Problems – U.S. Framework
U.S. District Court – key features
• Court must have jurisdiction (power) over persons
and subject matter
 Federal statutory questions (patent, copyright,
trademark – ok)
May be problematic in some cases (e.g.,
license interpretation)
 Parties from different states
May be problematic if defendant is wholly
outside of US borders
IPR Problems – U.S. Framework
U.S. District Court – key features
• Scheduled process
 Defendant’s answer to allegations in the
complaint
 Discovery to uncover facts for trial
 Expert witnesses
 Trial
IPR Problems – U.S. Framework
U.S. District Court – key features
• Possibility of a jury
 Hears testimony
 Weighs factual evidence
 Decides factual issues, such as credibility of
witnesses
• Jury has little or no technical background
 Uncertainty
IPR Problems – U.S. Framework
U.S. District Court – Process
• District court judge
 Oversees all aspects of case
 Written opinion deciding legal issues
 Order directing remedies
• Decision may be appealed
 U.S. Court of Appeals of the region in which
the district court is located
 U.S. Court of Appeals for the Federal Circuit
IPR Problems – U.S. Framework
U.S. District Court – remedies
• Monetary damages
 Compensatory
 Treble damages for willful
infringement
 Attorney’s fees
• Injunctive relief to stop infringer from
infringing, and prevent future
infringement
 Temporary or permanent
IPR Problems – U.S. Framework
U.S. District Court
• Advantages
 Parties must participate
 Court order is binding
 Injunctive relief and monetary
damages possible
IPR Problems – U.S. Framework
U.S. District Court
• Disadvantages
 Jury is unpredictable
 Takes a long time
 Very expensive
IPR Problems – U.S. Framework
United States International Trade Commission
(USITC)
• USITC is an independent government
agency
• Section 337 of the 1930 trade law – protect
against “unfair competition in import trade”
IPR Problems – U.S. Framework
USITC – over 500 cases since 1974
IPR Problems – U.S. Framework
USITC – Role
• USITC investigates unfair acts or methods of
competition connected to importation
 “Statutory” unfair acts – U.S. patent,
trademark, copyright, and mask work
infringement
 Other unfair acts – E.g. anti-dumping, trade
secret misappropriation
IPR Problems – U.S. Framework
USITC § 337 action
• Parties
 Complainant (that is, the “aggrieved” party)
 Respondent (that is, the “importing” party)
 Staff Attorney from the ITC’s Office of Unfair
Import Investigations (OUII)
 Administrative Law Judge (ALJ)
IPR Problems – U.S. Framework
USITC § 337 action
• OUII Staff Attorney
 Independent, separate third part
 Experienced in IP law, usually technically
background
 Protects the interest of the public when
considering the affects of the investigation on
the U.S. trade industry and economy.
 Helps with procedural issues; provides
“sounding board”
IPR Problems – U.S. Framework
USITC § 337 action – key features
• Jurisdiction
 In rem, which means it is focused on
importation of products, as opposed to the
acts or presence of persons.
IPR Problems – U.S. Framework
USITC § 337 action – key features
• Importation
 Complainant must show importation of a
product connected to the alleged unfair act in
order to satisfy subject matter jurisdiction.
• Domestic industry
 Economic showing: Requires showing
substantial U.S. exploitation of the
intellectual property by use of U.S. land,
labor, and capital in production-type activities
 Technical showing: Complainant or
licensee practices the IPR
IPR Problems – U.S. Framework
USITC § 337 action - process
• Complaint reviewed and initiated by the
Commission
• Chief ALJ assigns the investigation to an ALJ
and a OUII Staff Attorney
IPR Problems – U.S. Framework
USITC § 337 action - process
• Proceedings before the ALJ
 Discovery
 Hearing (that is, a trial)
• The ALJ Issues an “Initial Determination (ID)” on
the merits of all contested issues
IPR Problems – U.S. Framework
USITC § 337 action
• The ID is reviewed by the Commission
and the Commission issues a Final
Determination
 ID affirmed
 ID reversed, and/or sent back to ALJ
• Commission also issues a decision on
remedy and bonding
IPR Problems – U.S. Framework
USITC § 337 action
• Remedies
 Exclusion order, which is an order prohibiting
importation into the U.S. of infringing
products
Enforced by U.S. Customs at the U.S.
border
Temporary or permanent
IPR Problems – U.S. Framework
USITC § 337 action
• Remedies
 Cease and Desist order, which prevents any
parties from engaging in infringing activities
related to products that have already been
imported.
Instead of or in addition to exclusion order
Temporary or permanent
 NO monetary damages
IPR Problems – U.S. Framework
USITC § 337 action
• President has 60 days to review the final
determination of the Commission
• Possible to appeal the final
determination to the U.S. Court of
Appeals for the Federal Circuit
IPR Problems – U.S. Framework
USITC § 337 action
• Investigations 1995-2002 (102)
Violation
23%
No Violation
17%
Withdraw/
Dismiss
11%
Settlement/
Consent
Order
49%
IPR Problems – U.S. Framework
USITC
• Advantages
 Parties must participate
 Relatively quick resolution (12-15 months)
 Injunctive and temporary relief available to
stop infringement of IPR in the U.S.
 Broad jurisdiction – in rem (that is, power
over the property)
 U.S. Customs enforcement of decision
IPR Problems – U.S. Framework
USITC
• Disadvantages
 Fast, invasive discovery
 Still expensive – high costs in short period
 No damages or attorney’s fees
Thank you!
Questions?
Kevin C. Kunzendorf
Sughrue Mion, PLLC
2100 Pennsylvania Ave., NW
Washington, DC 20037
kkunzendorf@sughrue.com