INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY CONSIDERATIONS WHEN CONSIDERATIONS WHEN CONDUCTING BUSINESSCONDUCTING BUSINESS IN AMERICAIN AMERICA

Albert J.C. Chang, Esq. Chang & Coté, LLP美国诚德律师事务所

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Intellectual Property Considerations知识产权

✓ Patents 专利权✓ Utility Patents 实用专利✓ Design Patents 外观专利✓ Plants 植物新品种

✓ Trademarks & Service Marks 商标注册✓ Copyrights 著作权✓ Trade Secrets 商业机密✓ Domain Names 網絡域名✓ What to do: 该做什么

✓ Investigate your industry/sector 调查相同产业相关产品✓ Create a IP strategy (defense & offense) 订定产权策略✓ Maximize your IP rights 扩张产权权利✓ ITC (Section 337), US Courts, etc.

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Process of Patent Application专利申请程序

‣ Conference with Inventor by Attorney 律师会见发明人‣ Novelty Determination 决定创新程度‣ Prior Arts Search 先前发明调查 (3-4 weeks)

‣ Obtain Necessary Drawings 绘图 (2-3 weeks)

‣ Prepare the Patent Application 准备申请 (2-4 weeks)

‣ Submit Patent Application with US Patents & Trademarks Office 送件 (6-8 months)

‣ Communication with US Patents & Trademarks Office 连系‣ Approval of Patent Application 批准 (total: 1 to 3 years)

‣ Issuance of Letter of Patent (Certificate) 专利証书

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Patents 专利‣ 20 years from the date of filing of patent application 廿年的专利期间‣ Damages for Patent Infringement 侵权损失

‣ Lost Profit 获益损失‣ Reasonable Royalty 合理使用费‣ Up to 3x of damages for “Willful Infringement 高达三倍侵权损失‣ Prejudgement and Post Judgement interests 利息‣ Attorneys Fee in exceptional cases 律师费

‣ International Patent Application (Patent Cooperation Treaty) 国际申请‣ One application 一次申请‣ China, U.S.A and European Community (139 contracting states)

‣ 中国美国歐盟皆会员国‣ 1 application for all the members of PCT & 1 search (International

Phase) 一次申请国际阶段‣ Each country performs examination & issuance (National Phase)‣ 各国执行审查及发布‣ Fee for each country 申請費各國不同

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Patent News 专利新闻‣ U.S. patent applications by residents of China, excluding Hong Kong and Macau,

surged 12-fold between fiscal years 2000 and 2008, according to the U.S. Patent and Trademark Office.

‣ Chinese residents filed 5,129 U.S. patent applications in fiscal 2008.

‣ 7/2/09 - Changzhou Asian Endergonic Electronic Technology Co., based in Changzhou, China, filed a lawsuit against Best Buys, Walmart, Target, etc. for infringing its patent on a design for the dashboard mounts of GPS. First such lawsuit filed in the US by a Chinese company.

‣ 7/10/07 - Protecht (Chinese company) won a lawsuit filed by a US company for patent infringement. First such lawsuit won by a Chinese company in the US.

‣ 4/6/2009 - Yancheng Jiekang Sucralose Manufacture Co., Ltd. had successfully intervened in an action initiated by Taylor Science and Technology Co., Ltd. (UK) and Taylor Sucralose Co. (US) about the investigation regarding patent infringement before the US International Trade Commission (ITC). After China entered the WTO in 2001, this is the only Chinese enterprise that has intervened in an ITC 337 investigation and prevailed. Yancheng spent over 20,000,000 RMB in this action.

Note: The "337 investigation" refers to the investigation executed by the US International Trade Commission as to whether imported products infringe upon IP rights in accordance with Article 337 of the Tariff Act. Chinese companies are investigated under 337 more than companies from any other country.

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Non-Resident Filings by Country of Origin

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Trademarks 商标

‣ Differentiate the products or services from competitors

‣ 引领消费者对于产品和服务的识别‣ Mark has to be non-descriptive 非描述性‣ Conduct a Trademark Search before filing of the application is recommended

‣ 申請前先查核‣ May be renewed indefinitely if the mark is being used 有效期可以无限期的延续‣ Remedies for Infringement: 侵权的赔赏

‣ Injunction 禁止使用令‣ Trademark Owner’s Lost Profit 获益損失赔赏‣ Cost of the lawsuit 诉讼费用‣ 3x damages for Bad Faith infringement 三倍故意侵权赔赏

‣ International Trademark Applications - Madrid System 国际商标申请‣ One application 一次申请‣ Select any or all the members 选择会员国‣ Pay fees to each member selected 申请費因会员国不同‣ China, US, and others are members 中国美国皆会员国

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Trademark Infringement 商标侵权

Copyright 著作權➡ Exclusive Rights 著作权乃作者独有之权力 :

➡ (reproduction/copy) 复制或拷贝➡ (distribution) 派发➡ (derivation) 衍生➡ (public display) 公开展示➡ (public performance) 公开表演

➡ Registration of Copyright is not necessary for the protection of the rights 作者不需注册也有著作权的保护

➡ Prior to filing a lawsuit, the copyright must be registered 提起诉讼之前 , 必须注册其著作权

➡ Work completed outside of the US may proceed with lawsuit without registration under the Berne Convention 依照 ”伯恩公约” 在美国以外的地方完成的作品 , 著作权诉讼可在没有注册的状况下进行

➡ Independent Creation by different creators 独立创作➡ Even if there is substantial similarity 相似性已达”高度相似”但在

独立的状况下完成创作的，则谁也不侵犯谁的著作权➡ Not allowed under Patent or Trademark laws

在专利法和商标法中是没有”独立创作”的说法

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