# Presentation: 063672

## Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad

**Dorian Mazurkevich**
**Attorney-Advisor**
**Office of Enforcement**
**U.S. Patent and Trademark Office**

**Conference on Intellectual Property in the Global Marketplace**

## Protecting and Enforcing Your Intellectual Property Rights

***How to protect your intellectual property rights?***
**Strategic and Operational Measures**
**Tips to prevent the theft of your intellectual property before it happens.**
***How to enforce your intellectual property rights?***
**Legal Measures**
**Available options if your intellectual property is stolen.**

**Notes:**
How to protect your IPR?
Strategic and Operational Measures To Prevent the Theft
Tips to prevent the theft of your intellectual property before it happens
(Contracts with employees, conducting due diligence before transaction, etc.)
How to enforce your IPR?
Legal Measures To Remedy Theft
Understanding options if your intellectual property is stolen

## Protecting Your Intellectual Property Rights

***What exactly am I protecting?***
***What do I do to protect the intellectual property that I have identified*****?**

**Notes:**
Two steps in protecting your IP rights-

Identify the IP 
Implement measures to protect

## What am I protecting?
Determine what intellectual property your business has by conducting an “Internal IP Audit” to identify:  
Copyrights
Trademarks
Patents
Trade Secrets

**Determine what intellectual property your business has by conducting an “Internal IP Audit” to identify:****  **
***Copyrights***
***Trademarks***
***Patents***
***Trade Secrets***

**Protecting your Intellectual Property**

**Notes:**
In order to protect your company’s IP, you first need to determine what exactly you have to protect.

Yesterday, learned of the different forms of IP.

Go through your business and evaluate everything to determine if its protectible

## Conducting an Internal IP Audit
Trademarks:
Registered Marks
Business Names
Logos
Slogans
Domain Names
Product Packaging/Configuration
Website Design

**Trademarks:**
***Registered Marks***
***Business Names***
***Logos***
***Slogans***
***Domain Names***
***Product Packaging/Configuration***
***Website Design***

**Protecting your Intellectual Property**

**Notes:**
First- Assessment
What Trademarks do you own or Potentially have?

Registered marks (domestic and foreign)
Pending applications
Business names
Logos
Slogans
Domain names

Trade Dress:  
Product packaging or configuration
Website Design

Remember: Anything used to identify or distinguish the source of goods 

## Conducting an Internal IP Audit
Copyrights:
Registered Copyrights
Written Materials 
Photographs
Illustrations
Computer Software
Music/Film
Website Content

**Copyrights:**
***Registered Copyrights***
***Written Materials ***
***Photographs***
***Illustrations***
***Computer Software***
***Music/Film***
***Website Content***

**Protecting your Intellectual Property**

**Notes:**
Next- Evaluate your copyrights
Determine what you have that you can copyright

Copyrights:
Registered Copyrights
Written Materials 
Photographs
Illustrations
Computer Software
Music/Film
Website Content

## Conducting an Internal IP Audit
Patents:
Issued Patents
Pending Applications
Mechanical Devices
Electronic Devices
Medicine/Medical Devices
Chemical Composition/Process
Computer-Based Business Process (Software)

**Patents:**
***Issued Patents***
***Pending Applications***
***Mechanical Devices***
***Electronic Devices***
***Medicine/Medical Devices***
***Chemical Composition/Process***
***Computer-Based Business Process (Software)***

**Protecting your Intellectual Property**

**Notes:**
Next- What can you patent
Look for potential patentable items:
e.g. 
Mechanical Device 
Chemical Composition/Process
Computer-Based Business Process (aka Business method patents or software patent)

Generally, there are three broad categories of patentable subject matter: processes, machines and articles of manufacture and use.

A process could be a method for making something, a method for using something, or a method for doing something. Processes include business methods, most software, medical techniques, Machines include devices and apparatuses. Articles of manufacture include mechanical devices, electrical/electronic devices and compositions of matter such as chemicals, medicines, biotech.

## Conducting an Internal IP Audit
Trade Secret:
	“... means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: 
		(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and 
		(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

**Trade Secret:**
**	****“****... ****means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: **
**	****	****(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and **
**	****	****(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”**

**Protecting your Intellectual Property**

**Notes:**
Next, determine if there are any Trade Secrets

Most business probably already have some that are protectable
Most common form of IP for a businesses

Here’s a definition provided by Uniform Trade Secrets Act- 
(definition adopted by 44 states)
(READ DEFINITION)
Other simpler definition
"A trade secret may consist of any formula, pattern, device or compilation of information which is used in one’s business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.”  Restatement of Torts, § 757 comment (b) (1939).

## Trade Secret Factors:
Known outside of your business?
Known by those inside your business? 
Measures to guard secrecy? 
Value of the information?
Effort/cost in developing?
Easy to duplicate?

***Known outside of your business?***
***Known by those inside your business? ***
***Measures to guard secrecy? ***
***Value of the information?***
***Effort/cost in developing?***
***Easy to duplicate?***

**Protecting your Intellectual Property**

**Notes:**
Courts often look to the certain factors to determine 
whether a given idea or information constitutes a trade secret: 

1. the extent to which it is known outside of the business; 
2. the extent to which it is known by employees and others involved in the business; 
3. the extent of measures taken by the owner to guard the secrecy of the information; 
4. the value of the information to the business and to its competitors; 
5. the amount of effort or money expended in developing the information
6. the ease or difficulty with which the information could properly be duplicated by 
others.

## Trade Secret Factors:
Maintaining Secrecy
Limit Distribution
Mark “Confidential”
Secure Facilities and Files
Enact Policies and Procedures
Contracts with Employees and 3rd Parties

**Maintaining Secrecy**
***Limit Distribution***
***Mark “Confidential”***
***Secure Facilities and Files***
***Enact Policies and Procedures***
***Contracts with Employees and 3******rd****** Parties***

**Protecting your Intellectual Property**

**Notes:**
With Trade Secrets the factor that is most within control of business owner- Maintaining Secrecy

Overview briefly Some steps to consider
Limit Distribution
Mark “Confidential”
Secure Facilities and Files
Enact Policies and Procedures
Contracts with Employees and 3rd Parties

Will discuss in detail when I outline steps you can take to safeguard your IP

## Conducting an Internal IP Audit
Trade Secrets:
Customer Lists
Pricing/Cost Data
Customer Information and Sales Practices
Business Plans
Financial Data/Forecasts
Manufacturing Techniques
Design Manuals
Production Processes/Specifications
Survey/Research Data (including negative R&D)

**Trade Secrets:**
***Customer Lists***
***Pricing/Cost Data***
***Customer Information and Sales Practices***
***Business Plans***
***Financial Data/Forecasts***
***Manufacturing Techniques***
***Design Manuals***
***Production Processes/Specifications***
***Survey/Research Data (including negative R&D)***

**Protecting your Intellectual Property**

**Notes:**
Next step in the Audit is examine business what trade secrets you have to protect
   For example-
Customer Lists
Pricing/Cost Data
Customer Information and Sales Practices
Business Plans
Financial Data/Forecasts
Manufacturing Techniques
Design Manuals
Production Processes/Specifications
Survey/Research Data (including negative R&D)
-------Anything that that you have that if your competitor found out would give him an advantage

## What am I protecting?
Identify the IP in your business:
Copyrights
Trademarks
Patents
Trade Secrets

Can be a mixture of IP for single product.

**Identify the IP in your business:**
**Copyrights**
**Trademarks**
**Patents**
**Trade Secrets**
**  **
**Can be a mixture of IP for single product.**

**Protecting your Intellectual Property**

**Notes:**
When you identify the IP in your business
you may be multiple forms for single product 

For example- 
software may protect by patent and/or copyright

new product  may have
patent for mechanics of the product, 
trade dress for the  packaging
design patent for outside of the product, 
TM for the name 
copyright for users manual
trade secret for the customer list.

## Prioritize your IP:
Cost vs. Benefit
Offensive vs. Defensive Value

Implement measures to protect the IP that you have identified:
Internal (inside your business)
External (dealing with 3rd parties)

**Cost vs. Benefit**
**Offensive vs. Defensive Value**
**Implement measures to protect the IP that you have identified:**
**Internal (inside your business)**
**External (dealing with 3****rd**** parties)**

**Protecting your Intellectual Property**

**Notes:**
Once you have identified it-
Prioritize IP to be pursued and protected

Those that provide real competitive advantage
Those have defensive value for cross-licensing
Those that enhance asset base of business

Evaluate benefits of protection vs. costs in getting protection.

Once identified and determined what’s important, you can focus on protecting the IP
2 ways-
Internally (how you operate your business)
Externally (how you deal with outside parties) 

## Internal Measures to Safeguard your IP
Register IP
Pay maintenance and renewal fees
Confirm you own the IP
Take steps to secure your confidential information

**Register IP**
**Pay maintenance and renewal fees**
**Confirm you own the IP**
**Take steps to secure your confidential information**

**Protecting your Intellectual Property**

**Notes:**
When Protecting Your IP
1.  REGISTER YOUR IP
Register your trademark with USPTO
File application for patent protection with USPTO
	maybe only a provisional patent applications (to lock in date of invention)
Register your copyrights with the U.S. Copyright Office at the Library of Congress
Register with Customs (discuss later as part of administrative enforcement)
2.  PAY FEES
Pay Maintenance fees and renewal fees, esp. for domain names
 CONFIRM YOU OWN THE IP 
Review licenses, any contractual assignments,
Have employees (or other parties) signed over the rights if they were involved making the IP?
4. Take steps to keep your confidential information secret
Trade secrets- only recognized if you keep them secret

## Trade Secret Protection
Company Policies: 
Restrict physical access, lock premises, file cabinets, etc. 
Mark all confidential and trade secret documents “CONFIDENTIAL.”  
Limit access and distribution of confidential documents to necessary employees.
Shred and retrieve any distributed documents (failed mergers, departing employees).
Use computer encryption, password protection, firewalls, network security, esp. with laptop users.

**Company Policies: **
***Restrict physical access, lock premises, file cabinets, etc. ***
***Mark all confidential and trade secret documents “CONFIDENTIAL.”  ***
***Limit access and distribution of confidential documents to necessary employees.***
***Shred and retrieve any distributed documents (failed mergers, departing employees).***
***Use computer encryption, password protection, firewalls, network security, esp. with laptop users.***

**Protecting your Intellectual Property**

**Notes:**
How to Protect trade secrets -  
Implement protective measures-
Company policies and Employee Policies are very important

For Sensitive information be careful about:
Protection – physically secure the information
Marking – “confidential” – everyone on notice that it is valuable information
Storage – limit distribution
Transmission – be careful on how easily 
Destruction – shred and make sure documents are returned

Don’t implement protective measures jeopardized your trade secrets

## Trade Secret Protection
Employee Policies: 
Non-Disclosure Agreement
Non-Compete Agreement
IP Assignment 
Employee Manual - policy and procedures on treatment of confidential information:
regarding publications/speeches to prevent disclosure (i.e. trade secret review) 
regarding submission of ideas, new patents (i.e. inventors notebook)
Exit Interview

**Employee Policies: **
***Non-Disclosure Agreement***
***Non-Compete Agreement***
***IP Assignment ***
***Employee Manual - policy and procedures on treatment of confidential information:***
***regarding publications/speeches to prevent disclosure (i.e. trade secret review) ***
***regarding submission of ideas, new patents (i.e. inventors notebook)***
***Exit Interview***

**Protecting your Intellectual Property**

**Notes:**
How to Protect trade secrets -  
Implement protective Employee Policies

Have all new employees enter into contracts to protect your interests:

1.	Non-Disclosure Agreement aka Confidentiality Agreement
contracts between two or more parties where the subject of the agreement is a promise that information conveyed will be maintained in secrecy. Trade secrets- only recognized if you keep them secret
2.	Non-Compete Agreement
employees must agree not to work for a direct competitor for a certain amount of time after leaving your company.  Rule of reason (i.e. 1 year, check jurisdiction California has state laws that heavily restrict, and in some cases, completely bar noncompete agreements.
IP Assignment– stating IP developed is owned by company
(Employee Manual) Enact policy regarding treatment of confidential information
Explains-
	1. 	Marking things confidential, limiting distribution, using passwords...
	2.	When employees can make speeches and publications, implement a review process for trade secrets
	3.	Procedure for submission of ideas and new patents

FOR DEPARTEING EMPLOYEES- Conduct an Exit interviews-
Return and account for all confidential information. 
Provide them copy of their NDA or non-compete
Remind them of their obligations –
Have them execute an “Acknowledgement” a document where that recognize their continuing obligations
Make sure exit process is uniform (1 person in HR do it).

OTHER POLICIES-
Cultivate an awareness of IP among employees
Screen new employees for high ethical standards
Train employees and managers on safeguarding IP

## External Measures to Safeguard IP
Important with any business transaction with 3rd parties involving IP:
Acquisition 
Merger
Licensing
Joint-Venture
Sale

**Important with any business transaction with 3****rd**** parties involving IP:**
***Acquisition ***
***Merger***
***Licensing***
***Joint-Venture***
***Sale***

**Protecting your Intellectual Property**

**Notes:**
For many companies, the way they acquire their IP is through a 3rd party transaction.

In addition to Internal Controls you need External Controls

Important with any business transaction with 3rd parties involving IP:

Transaction can be:
Acquisition  
Merger
Licensing
Joint-Venture
Sale
Out-sourcing

## External Measures to Safeguard IP
Conduct Due Diligence of 3rd Party:
Assess the 3rd Party
Identify the IP
Review Underlying Documents (e.g. assignments, licenses, registrations, applications)
Verify Ownership/Proper Chain of Title
Lawsuits/Threatened Claims

**Conduct Due Diligence of 3****rd**** Party:**
***Assess the 3******rd****** Party***
***Identify the IP***
***Review Underlying Documents (e.g. assignments, licenses, registrations, applications)***
***Verify Ownership/Proper Chain of Title***
***Lawsuits/Threatened Claims***

**Protecting your Intellectual Property**

**Notes:**
Transactional Due Diligence- (obvious questions, but must be methodical)

Examine the 3rd party – whether its partners, vendors, outside contractors, licensor.
Want to know with whom your dealing 
  Don’t share tech. and business secrets too readily
  - find out the polices they have to protect IP (ex. confirm NDAs are in place).	

Identify the IP
What is it?
– Do they/ have authority to buy/sell/license the IP?

Identify IP Owner	
Are their proper assignments agreements?  ...with proper consideration ... exclusive or non-exclusive...
         Carefully review Esp. in start-ups
(ex. Employee invents something, company assumes it is theirs, files for patent, wants to license it... did employee sign a contract signing over invention?)
        That’s why IP Assignments very important when hire new employees

Any 3rd Party claims?  Threats of lawsuits?

WHY  DO ALL THIS? 

## External Measures to Safeguard IP
Conduct IP Review of Transaction:
Confidentiality /Non-Disclosure Agreement
Exclusivity
Territoriality 
Field of use
Quality control
Inspections/Audits
Indemnification Clause

**Conduct IP Review of Transaction:**
***Confidentiality /Non-Disclosure Agreement***
***Exclusivity***
***Territoriality ***
***Field of use***
***Quality control***
***Inspections/Audits***
***Indemnification Clause***

**Protecting your Intellectual Property**

**Notes:**
External Measures to Safeguard IP

Before you enter into the transaction and reveal anything valuable-
Enter into Confidentiality Agreement
Protects your information in case deal doesn’t go through

Conduct IP Review of Transaction:  Assess the Transaction-
If it’s a licensing agreement- is it 
Exclusive or non-exclusive?
Can you sublicense?
What the scope?
What territory?
What time frame?
What field of use?
How will you make sure your IP is protected by the licensor?
Indemnification Clause in K- in case you get sued because the licensor didn’t really own the IP or because it may infringe some other IP
These are things to consider when entering into any IP transaction.

## External Measures to Safeguard IP
Police your IP:
Review market
Monitor competitor’s filings
Risk assessment
Monitor internal controls

Enforce your IP:  Take legal action when necessary.

**Police your IP:**
***Review market***
***Monitor competitor’s filings***
***Risk assessment***
***Monitor internal controls***
**Enforce your IP:  Take legal action when necessary.**

**Protecting your Intellectual Property**

**Notes:**
Constantly Police your IP

Periodic review of market in key areas
Have employee reports on new developments
Review competitors’ filings and registrations
Monitor internal controls to maintain secrecy safeguards.

If infringement noticed. Take action, otherwise you risk waiver, 
  or barred by statute of limitations,
  or court may consider consented.

## Protecting and Enforcing Your Intellectual Property Rights

***How to enforce your IP?***
**Legal Options:**
**Civil**
**Criminal**
**Administrative**

**Notes:**
How to enforce your IPR?

Legal Options To Remedy Theft:

Civil
Criminal
Administrative	

## Enforcing Your Intellectual Property Rights

**Legal Measures to Enforce your IP:**
**Civil System**
**State and Federal**
**Alternative Dispute Resolution (ADR)**
**Criminal System**
**U.S. Department of Justice**
**Administrative System**
**U.S. Customs (Border Enforcement) **
**U.S. Patent & Trademark Office**

**Notes:**
Outlines the Legal options - if your intellectual property is stolen

Civil System
File Lawsuit in State or Federal Court
Consider Alternative Dispute Resolution (ADR)

Criminal System – Have criminal proceedings brought
U.S. Department of Justice

Administrative System – Seek administrative assistance
U.S. Customs (Border Enforcement) 
U.S. Patent & Trademark Office

## Enforcing Your Intellectual Property Rights

**Enforcing IP Through the Civil Court System:**
**Determine Whether Your IP Has Been Taken or Copied**
**Infringement Determination**
**Send Cease and Desist Letter**
**Negotiate or Enter into Licensing Agreement**
**File Claim**
**State or Federal Court**
**ADR**

**Notes:**
Enforcing IP Through the Civil Court System:
First must Determine Whether Your IP Has Been Taken or Copied
Need to make an infringement determination or if its trade secret whether its been misappropriated
Discuss Later in detail on the elements of infringement
Send Cease and Desist Letter
If Infringed, Negotiate or Enter into Licensing Agreement
File Claim By Court System or ADR (such as mediation or arbitration)

IP Litigation gets expensive very quickly, so considering ADR or entering into licensing agreement are important options

## Enforcing Your Intellectual Property Rights

**Patent Infringement:**
**Claim Construction By Judge:  **
**	****Determines the meaning and scope of the claims in the patent.**
**2.****	****Infringement Analysis By Jury:  Comparison of the properly construed claims to the accused device.**

**Notes:**
Has Your IP Been Infringed?
With regards to patents, it is a two-step analysis.
For Patent Infringement, first the Judge makes a legal determination to determine the meaning and scope of the claims in the patent.
At this stage both parties can use evidence to prove their interpretation:
Expert witnesses, documents related to history of the patent, the terms of the patent itself.
For step two, the Jury (using the judges determination of what the claims mean) will determine infringement, by Comparison of the properly construed claims to the accused device.
You will notice there is no new to prove willful copying.  That fact may be important later when damages are determined but for infringement it is not relevant.

## Enforcing Your Intellectual Property Rights

**Patent Infringement Defenses:**
**No Infringement**
**Patent Invalidity**
**Laches**
**Inequitable Conduct**
**Patent Misuse**
**Experimental Use**

**Notes:**
If accused of patent infringement, there are a number of defenses, the main ones are:

That there was no infringement
The patent is invalid
(which means- You should never have gotten the patent in the first place because of prior art that exists or some other reason.
30-50% of all litigated patents are held to be invalid.  Thus, there is risk involved in bringing a case with one of your patents
Inequitable conduct. That is some misrepresentations or failure to disclose information during the patent application process
Laches – an unreasonable or inexcusable delay in bringing the infringement action
5. Patent Misuse and Experimental use

## Enforcing Your Intellectual Property Rights

**Trademark Infringement**
***Is there a “***_***likelihood of confusion***_***” from the perspective of the reasonable prudent purchaser?***
**Strength of the plaintiff’s trademark**
**Similarity between the trademarks**
**Proximity of the products in the marketplace**
**Likelihood that the prior owner will bridge the gap**
**Evidence of actual confusion**
**Defendant’s good faith in adopting the mark**
**Quality of the defendant’s product**
**Care and sophistication of the buyers**

**Notes:**
Trademark Infringement – Question to ask is---
Is there a “likelihood of confusion” from the perspective of the reasonable prudent purchaser?
Courts use some of the following factors to determine:
Strength of the plaintiff’s trademark
Similarity between the trademarks
Proximity of the products in the marketplace
Likelihood that the prior owner will bridge the gap
Evidence of actual confusion
Defendant’s good faith in adopting the mark
Quality of the defendant’s product
Care and sophistication of the buyers. 

## Enforcing Your Intellectual Property Rights

**Trademark Infringement Defenses:**
**No Infringement**
**Abandonment**
**Laches**
**Fraudulent Registration**
**Acquiescence**
**Nominative Use (Comparative Advertising)**
**Parody**

**Notes:**
If accused of trademark infringement, there are a number of defenses, the main ones are:

No Infringement
Abandonment
Laches
Fraudulent Registration
Acquiescence
Nominative Use (Comparative Advertising)
	use only to reasonably identify the mark and user does not suggest sponsorship or endorsement by the trademark holder
Parody – technically, this would be found as non-infringement in that if a true parody it would not create the necessary likelihood of confusion

## Enforcing Your Intellectual Property Rights

**Copyright Infringement**
**Proof of Access to the Work**
**“****Substantial Similarity”**
**Vicarious Copyright Infringement**
**Copyright infringement by someone else**
**Ability to control and financial benefit**
**Contributory Copyright Infringement**
**Copyright infringement by someone else**
**Knowledge and substantial participation**

**Notes:**
What is Copyright Infringement?
A copyright is violated when someone copies, distributes, performs or displays all or part of a copyright work without the permission of the copyright owner.
How to prove:
2 factors:  Access and Substantial Similarity
Inverse Ratio, In that the More Substantial Similarity the less proof of Access that you need.

Notice: If two people create the same thing w/o copying, there is no infringement.  
Unlike patents and trademark, you have to show that you copied.
Vicarious Infringement - infringement by someone else
Ability to control and financial benefit
Contributory Infringement- infringement by someone else
Knowledge and substantial participation

## Enforcing Your Intellectual Property Rights

**Copyright Infringement Defenses**
**Non-infringement/Independent creation**
**Inequitable conduct**
**Laches**
**Fair use:**
**Type of use (commercial, nonprofit, or educational)**
**Nature of work (factual or creative)**
**Amount taken**
**Market effect **

**Notes:**
The Defenses to Copyright Infringement are primarily---
No infringement (such as b/c of independent creation)
Inequitable conduct
Laches
Fair use:  Use following factors to determine:
the purpose and character of the copying (certain types of educational copying is allowed)
the nature of the original (originals made for commercial reasons are less protected from copying than their purely artistic counterparts)
the amount and substantiality of the portion copied (one may not copy the "heart" of a work without the author's permission); and 
 the effect that such copying may have on the market for the original (copying may be permitted if it is unlikely to cause economic harm the original author). 
Other defenses: no infringement, laches

## Enforcing Your Intellectual Property Rights

**Misappropriation of Trade Secret**
**Acquisition of a trade secret of another by “**_**improper means**_**,” such as:**
**Theft**
**Bribery**
**Misrepresentation**
**breach of duty to maintain secrecy**
**Inducement of a breach of duty to maintain secrecy**
**Espionage through electronic or other means**

**Notes:**
How do you determine if you trade secrets have been stolen (called misappropriated)?

Under the Uniform Trade Secrets Act, the standard is taking a trade secret by “IMPROPER MEANS.”

The Uniform Trade Secrets Act defines "improper means" to include "theft, bribery, misrepresentation, breach or inducement of a breach of duty to maintain secrecy, or espionage through electronic or other means."

Trade Secrets are governed by state law, so remember the law varies by state.

## Enforcing Your Intellectual Property Rights

**Misappropriation of Trade Secret Defenses:**
**Not a Trade Secret:**
**Secrecy Not Maintained**
**Information Publicly Available**
**Reverse Engineering**

**Notes:**
Defenses to Misappropriation of Trade Secret include that:

There was no Trade Secret:
Because it was not kept secret enough
Or the information publicly available

Reverse Engineering
The other party was able to figure out the trade secret independently

## Enforcing Your Intellectual Property Rights

**Infringement / Misappropriation Remedies:**
**Injunction**
**Damages**
**“****Reasonable Royalty”**
**Lost profits**
**For patents, if willful infringement: 3x damages assessed and/or attorneys’ fees**
**For copyrights, can elect to get statutory damages **
**Pre/Post-Judgment Interest**

**Notes:**
Once Infringement or misappropriation has been found the Court can provide the following remedies:

Injunction, may be preliminary if sought early on or permanent
Monetary damages (reasonable royalty or lost profits – to compensate for any damages suffered)
Can get pre and post-judgment interest.
And in some case depending on the facts Attorney’s Fees (meaning the costs you incurred in bringing suit)
   For Patent infrg. can get treble damages if willful infringement is found
   For copyright infring., instead of actual damages and lost profits for copyright can get statutory damages
$750-30,000 as determined by the court.

## Enforcing Your Intellectual Property Rights

***If You Determine Your IP Has Been Infringed?***
**Cease and Desist Letter**
**Provides notice that infringement has occurred**
**In patent case, other party may file a Declaratory Judgment Action**
**Negotiate / Enter into Licensing Agreement**
**File Lawsuit**
**Litigation is costly**
**IP can be found to be invalid**
**Alternative Dispute Resolution (ADR)**

**Notes:**
If You Determine Your IP Has been stolen, what next steps do you take?

Send out a Cease and Desist Letter
Provides notice that infringement has occurred
Ask that infringement stop, threatens lawsuit

Contact other party and Negotiate/ Enter into Licensing Agreement
File Lawsuit
Litigation is costly 
IP can be found to be invalid by a court
Consider ADR (arbitration)
 - confidential, cheaper, quicker, patent invalidity issue.

## Enforcing Your Intellectual Property Rights

**Civil Court System:**
**Federal Courts**
**Copyrights**
**Trademarks**
**Patents**
**State Courts**
**Trade Secrets**
**Trademarks**

**Notes:**
In case a claim of infringement is filed you should understand the court system and where the case will be handled:
US is a federal system, where authority divided between the federal government and the states

With IP, the federal government and its courts oversee 
Copyrights,
Trademarks
Patents  (some jurisdictions, where a lot of high tech such as E. D. of VA and N.D. CA, have adopted specialized rules for patent case, proceed quickly 6-8 months, called rocket docket b/c of quick resolution)
The State courts hear claims related to Trade secrets / State and common law trademarks
Because trade secrets governed by State law you have 50 different laws, although
Most have adopted the Uniform Trade Secrets Act, many have variations, so with trade secrets it important of be aware of the requirements of your state.

## Enforcing Your Intellectual Property Rights

**Alternative Dispute Resolution (ADR):**
**Arbitration**
**Neutral 3****rd**** Party Makes Binding Ruling**
**Adversarial**
**Mediation**
**Neutral 3****rd**** Party Facilitates Resolution**
**Non-adversarial**
**Benefits**
**Speed, Economy, Confidential, Select Venue, Select Rules**

**Notes:**
Instead of Litigation may consider - Alternative Dispute Resolution (ADR):
Arbitration
Neutral 3rd Party Makes Binding Ruling (recognized and enforced by Courts)
Adversarial
Mediation
Neutral 3rd Party Facilitates Resolution
Non-adversarial
Benefits
Speed, Economy, Confidential, Select Venue, Select Rules 
(patent invalidity issue).
Given its benefits, consider placing a Arbitration clause in your IP Agreements:
“All disputes arising out of or relating to the present contract shall be finally settled by Arbitration...." 

## Enforcement of Intellectual Property: Criminal

**Enforcement of Intellectual Property: Criminal**

**Enforcing IP Through the Criminal System:**
**U.S. Department of Justice **
**Criminal Division: Computer Crime & Intellectual Property Section (CCIPS)**
**U.S. Attorney’s Office: Computer Hacking and Intellectual Property Units (CHIPS)**
**Federal Bureau of Investigation**
**U.S. Immigration & Customs Enforcement (ICE)**
**The National Intellectual Property Rights Coordination Center (IPR Center)**
**Online IP complaint form at: ****http://www.ice.gov**

**Notes:**
Now we will consider Criminal System to Enforce your IP
US DOJ does criminal prosecution and investigation of IP related-crimes.
Criminal Division: Computer Crime & Intellectual Property Section - prosecutor
U.S. Attorney’s Office: Computer Hacking and Intellectual Property Units (CHIPS) – prosecutors
Specialized CHIPS units in CA, FLA, MO, NJ, NY, PA, TX, VA, WA
FBI – investigators
US Immigration & Customs Enforcement
The National Intellectual Property Rights Coordination Center (IPR Center)
IPR Center- multi-agency Center responsible for coordinating a unified U.S. Government response regarding IPR enforcement issues
They have an online form you can inform them of piracy and counterfeiting you may know of. 

## Enforcement of Intellectual Property: Criminal

**Enforcement of Intellectual Property: Criminal**

**Criminal Statutes Involving IP:**
**Criminal Copyright Infringement (17 USC 506)**
**Trademark Counterfeiting Act (18 USC 2320)**
**Economic Espionage Act (18 USC 1832)**
**Smuggling Goods into the U.S. (18 USC 545)**
**Bootlegging Music (18 USC 2318)**
**Counterfeit Labeling (18 USC 2318)**

**Notes:**
Many criminal laws in place to enforce intellectual property. 

Here is a list of some of these laws.

## Enforcement of Intellectual Property: Criminal vs. Civil

**Enforcement of Intellectual Property: Criminal vs. Civil**

**Majority of IP enforcement actions in U.S. is civil not criminal**
**Burden of proof is more difficult in criminal cases**
**Higher thresholds for liability in criminal cases**
**Criminal remedies can include prison term**
**Factors evaluating whether to charge criminally:**
***Organized crime involvement***
***Public health and safety concerns***
***Commercial nature***
***Amount of loss and harm***

**Notes:**
Briefly Compare Civil vs. Criminal Enforcement of IP

Majority of IP enforcement actions in U.S. are civil not criminal
Burden of proof is more difficult in criminal cases
Higher thresholds for liability in criminal cases
	beyond reasonable doubt and willful (criminal) – 
	preponderance of evidence (civil)
Higher thresholds-
	felony copyright infringement more at least 10 copies valued at at least $2.5K w/in 180 days. (crim)
	civil infringement (no minimums)
Criminal remedies can include prison term
Factors evaluating whether to charge criminally:
Organized crime involvement
Public health and safety concerns
Commercial nature
Amount of loss and harm

## Enforcement of Intellectual Property: Administrative

**Enforcement of Intellectual Property: Administrative**

**Enforcing IP Through the Administrative System:**
**U.S. Customs and Border Protection:**
**Protects federally registered copyrights and trademarks that are recorded**
**Detention, Seizure and Forfeiture of Merchandise**
**Right to act on its own (*****ex officio***** authority)**** **
**U.S. Patent and Trademark Office:**
**Patent reexamination**
**Trademark opposition proceedings****	**** **

**Notes:**
Next look to how your can enforce your IP by the US Administrative System
U.S. Customs System
Provides protection for federally registered copyrights and trademarks that are also recorded with U.S. Customs. (separate from registering with PTO or Copyright Office) 
Patent not really covered because would have to make patent infringement analysis (scope of claims, etc.)
Involved in the Detention, Seizure and Forfeiture of Fake Merchandise
Right to act on its own called Ex officio authority – random examinations, warehouse sweeps
Also, enforces exclusion orders issued by US International Trade Commission resulting from unfair import investigations.
US Patent and Trademark Office
Conduct Re-examination of patents that a 3rd party may challenge
Also, conduct trademark opposition proceedings when a 3rd party challenges the issuance of a trademark.

## Enforcement of Intellectual Property: Administrative

**Enforcement of Intellectual Property: Administrative**

**U.S. Customs Recordation Procedure:**
**Trademarks are recorded for a term of years to run concurrently with the underlying registration.**
**Copyrights are recorded for 20 years, unless the copyright registration expires before that time.**
**At any time, owners may provide U.S. Customs with information on suspected infringers:****	**
**Manufacturers, country of origin, entry port, suspected dates, etc.**

**Notes:**
Look at How U.S. Customs Recordation System Works:
To enable US Customs to monitor your IP you must
Record your registered trademarks and copyrights with them:
Trademarks are recorded for a term of years to run concurrently with the underlying registration.
Copyrights are recorded for 20 years, unless the copyright registration expires before that time.
At any time, owners may provide U.S. Customs with information on suspected infringers:	
manufacturer, country of origin, entry ports, suspected dates, any other information they may have. 
Once you record your IP, US Customs puts your info into their database
The information in database available at all ports of entry.
Customs can then seize infringing goods, and can start administrative proceedings against seized goods.

## Enforcement of Intellectual Property: Administrative

**Enforcement of Intellectual Property: Administrative**

**Trademark/Copyright Recordation Application**
**Available at:  ****http://www.cbp.gov**
**Verifying the recordation of your registration with U.S. Customs**
**Intellectual Property Rights Search (IPRS)**
**https://iprs.cbp.gov/help.asp**

## Enforcement of Intellectual Property: Administrative

**Enforcement of Intellectual Property: Administrative**

**Notes:**
This is a screen shot of the U.S. Customs Website.

Here you can search what marks have been registered, and also download an Application form to register your own copyrights and trademarks.

## Protecting and Enforcing Your Intellectual Property RightsAbroad

**World Trade Organization**
**Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement:**
**Sets the minimum standards for IP protection for Member Countries.**
**IP laws are established and enforced by each individual Member Country.**
**Most countries have analogs to the IP protection/enforcement procedures in the U.S.**

**Notes:**
We have looked how to protect and enforce your IP in the US
Now like to consider international issues.
First you should be aware of the World Trade Organization
and the
Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement:
TRIPS sets the minimum standards for IP protection for Member Countries.
IP laws are established and enforced by each individual Member Country.
Most countries have analogs to the IP protection/enforcement procedures in the U.S.

## Protecting and Enforcing Your Intellectual Property RightsAbroad

**Office of the U.S. Trade Representative**
**“****Special 301” Process**
**Procedure used to identify countries that deny adequate protection for intellectual property rights.**
**Countries may be placed on the “Watch List” depending on level of IP protection.**
**May be subject to sanctions.**
**Review conducted each year.**

**Notes:**
Next, if considering to distribute your IP abroad also be aware of the 
Office of the U.S.Trade Representative
“Special 301”
Procedure used to identify countries that deny adequate protection for intellectual property rights.
Countries may be placed on the “Watch List” depending on level of IP protection.
May be subject to sanctions.
Review conducted each year.

## Protecting and Enforcing Your Intellectual Property RightsAbroad

**Seek local support to protect your IP**
**Contact the local trade associations for your industry**
**Contact local American Chamber of Commerce**
**Contact local officials who enforce IP**
**Hire a lawyer in the foreign market**
**Should work jointly with your U.S. lawyer providing local expertise**
**Protect and enforce IP based on local law**

**Notes:**
When entering a Foreign Market you should:
Determine the IP climate and seek local support to protect your IP
Contact the local trade associations for your industry
Contact local American Chamber of Commerce
Contact local officials who enforce IP

Hire a lawyer in the foreign market
Should work jointly with your U.S. lawyer providing local expertise
Take steps to protect and enforce your IP, based on local law
Under TRIPS we are seeing some of the same procedures such a the Customs and Border Enforcement issues I discussed.
The tips I mentioned before on protection and enforcement in the U.S. are just as applicable and should be considered here.

## Strategy Targeting Organized Piracy (STOP!) Initiative

**Strategy Targeting Organized Piracy (STOP!) Initiative**

**Most comprehensive initiative ever advanced to combat piracy and counterfeiting.**
**Dismantle criminal enterprises that steal IP.**
**Help companies establish their rights in the U.S. and abroad.**
**Reach out to our trading partners and build an international coalition to block fake goods.**
**Maintains a telephone hotline to contact and IPR legal expert: **
***1-866-999-HALT***

**Notes:**
Lastly I would like to remind everyone about the STOP initiative.
Established in October 2004
It is the most comprehensive initiative ever advanced to combat piracy and counterfeiting.
It is designed to crack down on counterfeit and pirated goods
And also help small and mid-sized businesses in protecting their IP rights

We maintain a telephone hotline at 1-866-999-HALT
where IP experts are available to answer any questions you may have related to IP enforcement issues.

## Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad

**Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad**

**Dorian Mazurkevich**
**Attorney-Advisor**
**dorian.mazurkevich@uspto.gov**

**Notes:**
I hope you have found this presentation helpful and I thank you for your time.