# Presentation: 661019

## STOPWhat the USG is Doing to Thwart IP Theft

-   “China: Risk, Reward & How to Win”
-   Tom Sydnor, Attorney-Advisor
-   Office of International Relations, USPTO
-   thomas.sydnor@uspto.gov

## STOP: Strategy Targeting Organized Piracy (and Counterfeiting, Too!)

- Just what *is* STOP?  Simply stated, the STOP Initiative protects U.S. businesses and consumers from fake goods.
- STOP is the most comprehensive initiative ever advanced to fight global piracy where it starts, block bogus goods at America’s borders, and help American businesses secure and enforce their rights around the world.

## How Serious a Problem Are We Facing?

- Roughly 7-8% of world trade every year is in counterfeit goods. That is the equivalent of as much as $512 billion in global lost sales. Of that amount, U.S. companies lose between $200 billion and $250 billion.
- IP theft has a major impact at home, too: according to the U.S. Chamber of Commerce, overall intellectual property theft costs 750,000 U.S. jobs a year.
- Which sectors are most affected? IP theft poses a risk to *all* industry sectors.

## So...the Problem IS Serious!

- The Five-Point Plan under STOP –
*Empower U.S. innovators to better protect their rights at home and abroad.*
- Increase efforts to seize counterfeit and pirated goods at our borders.
- Pursue criminal enterprises involved in counterfeiting and piracy.
- Aggressively engage our trading partners to join our efforts.
*Work closely and creatively with U.S. industry.  *

## Definitions – Just What Are We Trying to Protect?

- PATENT -> protects an invention.
- COPYRIGHT -> protects an original artistic or literary work. *(Term “piracy” refers to copyright.)*
- TRADEMARK -> a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods (or services) of one party from those of others.  *(Term “counterfeiting” refers to trademark.)*
- TRADE SECRET -> confidential information (shhh!).

## A Typical STOP Hotline Scenario

- I have just discovered that my product is being ripped off by a company in China.
- No, I am not marketing or manufacturing my products in China.
- I may (or may not) have U.S. patents and/or registered trademarks.
- No, I have not obtained (patents) (trademarks) in China related to my product that is being infringed.
*WHAT IS MY RECOURSE? (And the corollary, Just what is the USG doing about all this?)*

## A Typical STOP Hotline Scenario

*WHAT IS MY RECOURSE?*
- Not much, very limited, if you didn’t secure your rights in China (or other country).*  *

## “TERRITORIALITY” – A Basic Principle

- Trademarks, like patents, are TERRITORIAL.
- This means that these rights must be secured on a country-by-country basis.
- U.S. = first-to-*USE*
- China = first-to-*FILE*

## “TERRITORIALITY” – A Basic Principle

- No surprise, then, that we consider filing –
- In countries where we *sell* our goods;
- In countries where we’re *thinking about selling* our goods;
- In countries where we *manufacture* our goods;
- But, have we also considered filing –
- In countries where our goods likely will be *copied*, i.e., “defensive registration”?

## STOPFakes.gov Website

- What is Intellectual Property?
- Why Protect Intellectual Property?
- How Can I Protect My Intellectual Property?
- Who Can Help Me Protect My Intellectual Property?

## STOPFakes.gov Website

- How Can I Protect My Intellectual Property?
- How do I register my trademark, patent, or copyright abroad?
- Trademark/Patent – country-by-country
- Copyright – no “international copyright”
- How do I enforce my intellectual property rights in a foreign country?
- Country-by-country
- Owning rights also requires enforcing rights!

## STOPFakes.gov Website

- How Can I Protect My Intellectual Property?
- Working with legal counsel to develop an overall IPR protection strategy;
- Developing detailed IPR language for licensing and subcontracting contracts;
- Conducting due diligence of potential foreign partners (The U.S. Commercial Service can help, see Export.gov);
- Recording their U.S.-registered trademarks and copyrights with Customs and Border Protection ($190); and
- Securing and registering patents, trademarks, and copyrights in key foreign markets, including defensively in countries where IPR violations are common.

## How Can I Protect My Intellectual Property?

- WHAT OTHER PRACTICAL TIPS HAVE WE HEARD?
- Limit info on websites!
- Limit availability of info in trade shows (e.g., no photos)!
- Register product names in English and Chinese and use both phonetic and conceptual methods!
- Limit # of product names – fewer to police!
- Don’t overlook registering copyright in catalogues, packaging, promotional materials!
- Work with skilled counsel – expert in trademarks or patents or copyrights – who can identify equally qualified local counsel!

## How Can I Protect My Intellectual Property?

_***Don’t trot out your product until you’ve got your IP in place!  ***_
- Countries where selling goods
- Countries where thinking about selling goods
- Countries where manufacturing products
- AND COUNTRIES WHERE COPYING IS LIKELY.

## Who Can Help Me Protect My Intellectual Property?

- USG IP Resources (Domestic)
- USG IP Resources (International)
- Inter-Governmental IP Resources
- Private Sector IP Resources (Domestic)
- Private Sector IP Resources (International)

## Who Can Help Me Protect My Intellectual Property? – The USPTO “China Team”

- Trademarks
- Susan.Anthony@uspto.gov
- Cynthia.Henderson@uspto.gov
- Copyright
- Thomas.Sydnor@uspto.gov
- Jennifer.Ness@uspto.gov
- Patents
- Elaine.Wu@uspto.gov
- Jasemine.Chambers@uspto.gov
- Enforcement
- Timothy.Browning@uspto.gov
- Elaine.Gin@uspto.gov
- MAIN TELEPHONE NUMBER: 571-272-9300

## You, STOP, and China, China, China

- STOP HOTLINE: 1-866-999-HALT (or use web form)
- STOPFakes.gov Website
- “China [IPR] Toolkit” (and other countries)
- Information about events, e.g., USEAC events, USPTO IPAC events, USPTO “China Roadshows”, new DOC Webinar Series
- “China IPR Advisory Program” with ABA (1-hour free consultation with expert attorney)

## You, STOP, and China, China, China

- Not posted on STOPFakes.gov yet, but –
- China has established an IPR website: www.ipr.gov.cn
- The China Trademark Office has established an online trademark search database:
- http://sbj.saic.gov.cn/english/search/search.asp
- Also, China has placed Ombudsman in U.S.

## Let’s STOP Here.

- Tell us what you need!
- We’re always interested in hearing about what we can do better, on the STOPFakes.gov website, in our roadshows and other educational outreach efforts, or in any other way!
- We’re also always interested in hearing about what we do well!  Let us know if we made a positive difference for you today!