IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

Bio of Tina Dorr

Bio of Loretta Freeman

In the latest episode of the IP Friday’s podcast, hosts Kenneth Suzan spoke with two distinguished intellectual property (IP) attorneys, Tina Dorr and Loretta Freeman, from Barnes and Thornburg LLP. The discussion provided valuable insights into patent law, focusing on the career paths of the guests, patent marking, virtual patent marking, and the implications of these practices for recovering monetary damages in infringement cases.

Career Paths to Patent Law

Both Tina and Loretta shared their unique journeys into the field of patent law, emphasizing that many patent attorneys enter the profession as a second or third career. Tina transitioned from a background in science to patent law, driven by a passion for solving business problems and helping clients achieve their goals through legal tools. Loretta, who started as a product development engineer at 3M, discovered her passion for IP while working with attorneys on patentability issues, eventually leading her to pursue a legal career in this field. Both emphasized the importance of a strong technical background for those interested in patent law, but also highlighted the diverse opportunities available in IP law, even for those without a science or engineering degree.

Patent Marking and Virtual Patent Marking

The conversation then delved into the crucial topic of patent marking, a practice that, while optional, can significantly impact a patent holder’s ability to recover damages in cases of infringement. Tina explained that proper patent marking provides constructive notice to the public that a product is patented, which can allow for the recovery of monetary damages from the date of infringement. She also discussed the legal requirements for both physical and virtual patent marking, emphasizing the importance of consistent and continuous marking to maximize potential damages.

Loretta expanded on this by discussing the complexities of virtual patent marking, particularly for companies with large patent portfolios. She highlighted the cost-effectiveness and flexibility of virtual marking but warned of the challenges in maintaining accurate and up-to-date patent information on a dedicated website. Both guests stressed the importance of coordination between legal teams, R&D, and management to ensure that patent marking is handled correctly, thereby reducing the risk of false marking and ensuring compliance with legal standards.

Monetary Damages in Patent Infringement Cases

The discussion also covered the types of monetary damages available in patent infringement cases, with Tina explaining the three main categories: reasonable royalties, lost profits, and triple (triple) damages. She noted that while calculating these damages can be complex, they can range from thousands to billions of dollars, depending on the case. The importance of proving willful infringement for obtaining triple damages was also highlighted, with Tina emphasizing the role of patent marking in demonstrating that an infringer had knowledge of the patent.

Best Practices and Pitfalls

Both Tina and Loretta offered practical advice on best practices for managing patent marking, particularly in the context of licensing and product transfers. They underscored the need for clear agreements on who is responsible for marking in licensing deals and the importance of maintaining accurate records to avoid pitfalls such as false marking.

In conclusion, this episode of the IP Friday’s podcast provided a comprehensive look at the strategic importance of patent marking and the potential financial implications in IP law. The insights shared by Tina Dorr and Loretta Freeman are invaluable for businesses and legal professionals looking to navigate the complexities of patent law effectively.

Kenneth Suzan: Our guests today on the IP Friday’s podcast are Tina Dorr and Loretta Freeman.

Kenneth Suzan: Tina is a partner in the Atlanta Office of Barnes and Thornburg LLP. She represents clients in a wide range of technology areas, including chemical, material, life science, mechanical, aerospace, and semiconductor technologies, including those within batteries, as well as water treatment, fibers and textiles, pharmaceuticals, apparel, consumer products, nutritional supplements, food and beverage, and construction.

Kenneth Suzan: Tina holds a BS in Biology summa cum laude from the University of Georgia, a PhD in Chemistry and Biochemistry from the Georgia Institute of Technology, and a JD cum laude from Georgia State University College of Law. Also joining us today from Barnes and Thornburg is Loretta Freeman. Loretta is a partner with the firm, and her practice involves virtually all aspects of intellectual property law with particular emphasis on domestic and international patent and trademark procurement.

Kenneth Suzan: Her practice includes preparing and prosecuting patent applications in the mechanical arts, design patents, trademark applications, trade dress, and due diligence investigations.

Kenneth Suzan: Loretta holds a BS in Chemical Engineering cum laude from Florida A&M University, and a JD from the William Mitchell College of Law.

Kenneth Suzan: Welcome, Tina and Loretta, to the IP Friday’s podcast.

Tina Dorr: Thanks, Ken. Thanks for having us.

Loretta Freeman: Thank you. Thanks so much.

Kenneth Suzan: So let’s talk about your backgrounds and your paths to becoming patent attorneys. Any words of wisdom for those interested in following this path?

Tina Dorr: Sure, I’ll start.

Loretta Freeman: Go ahead, Tina.

Tina Dorr: Okay, thanks, Loretta. So, as a patent attorney, almost everyone that becomes a patent attorney does so as a second or third career because I’m sure your listeners know that you have to have a technical background in a science or engineering field. And I would say that if you have a love for science or engineering, you have to do this job as a patent attorney every day. But you really have to also love reading and writing. You have to enjoy those things, and you also have to really enjoy—this is my favorite part of my job as a partner in a law firm—helping people and developing relationships with my clients. And that’s something that takes time and is not something that you have a chance to do very much when you first begin practicing as a junior attorney. You really have to learn how to write the patents, do the work, but ultimately, as you get further in your career, you get to truly become partners with your clients and help them advance their business goals. And we use legal tools that I learned in law school and along the way as an attorney, but really helping people solve their business problems is something that I truly, truly enjoy. And it’s the reason that I am happy that I transitioned from science to patent law.

Kenneth Suzan: Loretta, what are your thoughts?

Loretta Freeman: Yeah, my path to becoming a patent attorney was quite interesting. And I agree with you, Tina, that most of us who are probably practicing in this field, it’s either a second or third career, right? But that’s certainly true for me because I really didn’t have any knowledge of what intellectual property was when I was doing my undergraduate degree. No one really told me or gave me any information on what this field was at that time. I had no clue until I started working in the industry as a product development engineer at 3M. And working at a company like that, you get exposed to a lot of things. And one of the requirements as an engineer was you had to know the field in which you were developing products. And so we really had an obligation to understand the arts. And that’s where I got exposed to IP, sitting across the table with these attorneys, talking about what it was I was developing in the lab and what we were following on for patentability. It just became a real passion of mine. And I just said, “Wow, this is something else I can do.” And that was my path to becoming a patent attorney—going to law school to take this route.

Loretta Freeman: And I think the advice I would just kind of tell people is, for me, practicing in this field is so awesome because not only do you continue to work with a team and inventors and being able to see a variety of things, it’s just so complex. I mean, there’s just so many things that you can do and see as an IP attorney because IP law is so varied. There’s just a lot of things that you can do, either on the patent prosecution side or the litigation side; there’s just a whole gamut there. And so I would just say, even if you don’t have a technical background, if you’re not in the sciences, if you don’t have an engineering degree, IP law is still a field that can be very exciting for you because you can do litigation. And a lot of folks would enjoy that as well, even without having the science background. So that was kind of my path to becoming a patent attorney—just being exposed to it as an engineer working for a major company.

Kenneth Suzan: Well, thank you, Loretta and Tina, for sharing your backgrounds. We’re gonna jump now into the substance of today’s podcast, which is in the area of patent marking and virtual patent marking. I know we’ve touched upon this topic in another podcast episode, but we’re gonna go deeper into those issues. We’ll start with Tina today. Tina, what are the basic legal requirements for patent marking and virtual patent marking?

Tina Dorr: Thanks, Ken. So, patent marking is optional. It’s not something that’s required by patent owners at all. It’s optional, but by statute, it’s something that gives patent owners the option to provide what’s called notice to the public of their patented products. And so by providing this notice, by marking products or virtually marking them, you provide this notice which allows you, if someone infringes your patent, to recover monetary damages for the infringement that go all the way back to that notice. So while you don’t have to provide this notice, the benefit is that if someone infringes your patent, you can collect damages. And so the statute says that there are two ways to do it. You can provide constructive notice by marking your product itself. And you can either say “patent” or “patent with the patent number” actually on the product. And that is what you want to do if at all possible—mark the product itself. Now, say that, for example, you have a cup with your company name on it and any other writing. If your product has any other writing on it, then the court’s gonna want you to actually provide that notice on the product itself if you’re using constructive notice by marking the product.

Tina Dorr: Another way to provide notice is through letting a competitor or potential infringer know in writing. So if you don’t mark your products but you discover someone infringing your patent, you can send them a letter, give them the patent number or a copy of your patent. And that’s another way to provide notice. And then again, potential damages would go back to that if you didn’t mark your products to the timing or the date of that letter.

Kenneth Suzan: Sure, sure. No, that’s very interesting. We’re gonna, along those lines, we’re gonna turn to Loretta. Loretta, what factors must be considered when determining whether to use virtual patent marking?

Loretta Freeman: Yeah, determining whether to virtual mark and how to use virtual marking can be more complex than you think. And companies should definitely give this some serious thought, especially those companies with large patent portfolios and/or extensive product offerings. In some cases, the expense in marking the product may be disproportionate to the cost of the product itself. So it may be easier and more cost-effective to virtually mark. For example, just think about the expense that can come with modifying your labeling and packaging information or a manufacturing process to change mode tooling in order to reflect a change in the patent information.

Loretta Freeman: Of course, there are other things that could be done if the patent marking is included in the tooling. Manufacturers can consider using removable inserts that have the patent marking information on them, which can be easily updated and replaced when needed, rather than having to make an entirely new tool.

Loretta Freeman: So there are ways to make this more cost-effective, but you also have the likelihood of needing to scrap old packaging and labeling inventory as you’re trying to maintain accurate patent information. So it’s much easier to update a virtual marking website, and companies can avoid the expense and effort required to update and maintain patent information on products. So e-marking or virtual marking can definitely provide cost-effectiveness, flexibility, and transparency. But if you’re going to virtually mark, companies must ensure that their designated URL remains functional at all times, or you risk the public and potential infringers not being noticed that the products are patented. So the marking system may be a little burdensome to maintain. So you want to consider whether or not your company would be able to commit to keeping such a website updated with the patent information related to each product.

Loretta Freeman: And back to what Tina was mentioning as far as marking on the product itself, the size of the product and whether you can physically mark directly on it should also be considered. Some patented parts may be so small that physical marking would be unfeasible or difficult to even read. And in these cases, you might consider virtually marking and perhaps virtually marking the packaging, which is acceptable only if marking the product cannot be done. And in some cases, there are patented products that are enclosed within a larger product and are never seen by the public, right? For example, products such as computer software, which require special considerations. You might want to indicate the patent during startup or include the information in the documentation of the software. You would also want to include the patent marking within links if the software is internet-based. So these are just some factors that you want to think about when you’re considering whether to virtually patent mark.

Kenneth Suzan: Thank you, Loretta. Following on our discussion here, I want to talk about some best practices. What are some best practices for virtual patent marking, and what steps can patent owners and their counsel take to develop their virtual patent marking program?

Loretta Freeman: I would say for corporations, I like to emphasize having the legal team work closely with management and R&D engineers to identify which products actually fall under the protection of a particular patent. It is important that everyone understands the marking obligations to ensure full compliance with the rules. And so when you work closely together, you can avoid any confusion. And this also will maximize any potential damage awards in cases of infringement. So for sure, one best practice is to just work closely together with your team and making sure that you probably have everything identified. Another one I would just note is having a formal marking program in itself, right? It’s very important to maintain good records. And so having a formal marking program can help with that. And being sure to document its implementation when you actually start this marking program because you want to meet the substantially consistent and continuous aspect of the marking requirement. So having routine monitoring and updating of the URL website is key, as I mentioned earlier, to ensure all the information is accurate and up to date. And you want to indicate on the website when your patent listing was last updated so you can ensure the marking program is consistently followed by manufacturers or licensees, whomever. And so you want to make sure that you’re working closely with those individuals as well.

Loretta Freeman: And another thing to consider is whether a single URL is appropriate, right? I mean, if your company has multiple divisions, perhaps consider whether a different URL should be used for each division or business unit or product family or product line. You might have multiple URLs to help with providing the product-to-patent association that’s required under the law. And it also may be very well helpful in making a divestiture. If there’s anything that were to come up in a particular business later, that could be easier for you down the road.

Kenneth Suzan: Very, very useful. Yeah. Are there any other things that come to mind in this area?

Loretta Freeman: I think from a patent owner’s perspective, I think just maintaining good records to show any changes that are made to the website, the dates that the changes were made, you want to make sure that you keep good records on that. Products, packaging, labeling—all that should be reviewed from time to time to ensure accuracy. Like, you want to make sure expired patents are removed. You want to make sure that new patents are included and that any patents listed do, in fact, cover the marked products. So having this routine audit program in place to monitor and update patent marking may help a manufacturer or company demonstrate that it did not have intent, which is a requirement for proving false marking, to falsely deceive the public and help to avoid penalties associated with false marking.

Kenneth Suzan: Very good, Loretta. Very helpful and useful information. So now we’re gonna shift gears and talk about monetary damages. We’ll talk to Tina about that. So Tina, what types of benefits and potential damages could you gain from properly marking?

Tina Dorr: Good question, Ken. And we’ve been talking about damages. And so damages—there are several types of damages that can be awarded, and these can be hundreds of thousands, millions, billions of dollars potentially. But the three main types are reasonable royalties, lost profits, and occasionally, triple damages. And reasonable royalties are—everyone’s probably heard this term—the fair market value of a license or a royalty for what your infringer would have paid you to use your patents. So to calculate this—and there are experts and companies that do this kind of thing—it’s very complex, it’s dependent on facts, but it also involves a lot of imagination because to calculate the reasonable royalty, the parties are supposed to go back in time and envision a potential amicable situation prior to any litigation, prior to any infringement, a licensing agreement. And they are to consider the licensing agreement that they would have reached based on factors at that time, such as their mindsets, financial situations, and other similar deals.

Tina Dorr: Lost profits is the second type that I mentioned, which would compensate a patent owner for money that they would have made if not for the infringement. So this type of damage requires a showing that your business suffered losses because of the infringement.

Tina Dorr: And then the last type is triple damages, and that’s triple money damages—if the defendant’s infringement was willful. So to prove—I think Loretta might’ve mentioned this—to prove that the infringement was willful, intentional, that they knew about the patent, you have to prove those two things: that the defendant knew about that patent (that’s why patent marking is important) and that they copied or tried to design around it so that it was intentional. And so that, of course, is gonna probably only come out during discovery where documents and emails are reviewed.

Kenneth Suzan: Thank you, Tina. Now let’s also look at patent infringement. If you’re sued for patent infringement, what steps should you take to determine whether the plaintiff properly marked their patented goods to assess your risk for owing damages?

Tina Dorr: Great question. Now, we’ve mentioned a few times that marking isn’t—or maybe I didn’t mention this earlier, I’m not sure if I did or not—but marking isn’t effective until substantially all of the patented products being sold are properly marked. So say that you’re selling some in Georgia and then you’re selling some in California and you’re only marking the products in Georgia for whatever reason. That is not substantially all the patented products. So if you receive a letter—a cease and desist letter, or a complaint for alleged patent infringement—the first thing you want to do, and you can do this informally (of course, this will be done in discovery as well), but you want to look and see that all of the products are consistently marked because if the patent owner has failed to consistently mark, it’s possible that the issue can be decided very early on in summary judgment.

Kenneth Suzan: Mm-hmm.

Kenneth Suzan: And Loretta, let’s talk about how virtual patent marking is being looked at in the federal courts. How are the federal courts treating virtual patent marking these days?

Loretta Freeman: Yeah, I think one of the things—so I was looking at this question, and I really just wanted to focus on the liability for false marking, right? And just making people aware of this liability because marking a product with a patent that does not cover the product can create liability for false marking. And the courts really view that quite seriously, as well as marking a product with a patent number without consent from the patent owner or marking an unpatented product or marking a product “patent pending” when there is no patent pending, right? So there are certain liabilities that you can be at risk of if you do any of those things. And marking a product with an expired patent is no longer considered false marking. A very famous lawsuit involved false marking with expired patents, but the courts eventually found no violation of patent marking laws because there was no intent to deceive. And so Congress amended patent laws under the AIA in 2011 to exclude expired patents for false marking. In addition to this, false marking suits can no longer be filed by ordinary citizens. Only the government can pursue false marking claims, and as such, these suits have dropped off significantly. But I think having a routine audit program can help show that there was no deceptive intent. And so you can kind of move yourself away from these types of risks.

Kenneth Suzan: Very, very helpful information indeed. Tina, if you sell or license a patent, who is responsible for marking?

Tina Dorr: Great question. And this issue comes up all the time. So a significant problem can arise when products are sold or entire businesses are acquired or divested by a device maker and patent owner. And when a patent or patented device is transferred between entities, it is important in that deal to identify who has the responsibility to maintain the marking. Because courts are very clear that the law requires substantially all products to be marked and that, as Loretta mentioned, the marking is substantially consistent and continuous. And this holds true with licensing too. So if a patent owner licenses a patent to a licensee, in order to maintain that consistency in that licensing agreement, it needs to be clear who is going to maintain that mark. And there’s some tension there because, for example, if you’re licensing a patent, of course, the licensee may not wish to have that if it’s virtually marked with the patent owner’s URL website, which is probably going to have its name on that website. That licensee probably doesn’t want that patent owner—who could be a supplier competitor—on their product. But again, it’s really important that those deal lawyers are working closely with IP lawyers together to make it very clear who’s going to continue to and how that marking is going to continue to ensure that the marking is substantially consistent and continuous.

Kenneth Suzan: Very, very good. So we’re coming up near the end of our podcast today. We have one final question that is for Loretta. Loretta, what are some pitfalls and uncertainties around virtual patent marking that you can share with our listeners?

Loretta Freeman: I think, well, there could be a few things, but I want to highlight one for sure that we’ve talked about already. And it’s mostly around the difficulty of linking patents to products and making sure that you have that accurately when you virtually mark. It is so important to have your legal team working closely with your R&D team and management to ensure that you are marking your product with patents that cover the product to provide constructive notice, which may allow collection of higher damages in infringements. I mean, it just really starts there, right? Incorrect patent marking can make a manufacturer liable for false marking. And ineffective patent marking requires routine monitoring and updating to ensure the marking is accurate. So you want to make sure that you have an effective marking system and routine to ensure that you don’t fall into these pitfalls of not having your website accurate and up to date and actually available for those that you’re trying to put on notice.

Kenneth Suzan: Very, very helpful. Tina, do you have any comments on the pitfalls and uncertainties at all?

Tina Dorr: Yeah, I’ll highlight again that, as Loretta mentioned, in many cases, the parties that are responsible for maintaining the virtual patent website and the virtual marking program are their marketing team, and they’re not working necessarily very closely with the innovation team or the R&D team. And maybe they don’t understand the importance. And so I think having regular internal education—and this can come from outside counsel who are, I’m sure, happy to provide a 30-minute lunch and learn on why it’s important to maintain this website and maybe best practices and some of the things that Loretta mentioned to ensure that you’re accurately maintaining the site up to date—and why it’s important. I think understanding that “why” will really help drive and help make that virtual patent marking program robust and continuous.

Kenneth Suzan: Excellent. Tina, Loretta, thank you so much for joining us today on the IP Friday’s podcast. This has been fantastic. And we will list in the show notes both of your firm bios if people want to get in touch with you. Thank you both once again.

Tina Dorr: Thank you very much, Ken.

STOPfakes.gov

Information pages of the German Patent and Trademark Office for SMEs

Episode Overview: This episode features an interview with Michelle Sara King, the intellectual property team lead and senior international trade specialist at the International Trade Administration in the U.S. Department of Commerce. The discussion centers on her role, the initiatives she leads, and advice for businesses on protecting intellectual property (IP) internationally.

Main Takeaways:

This episode highlights the critical work being done to protect intellectual property rights globally and provides practical advice for businesses to safeguard their IP assets.

Rolf Claessen: Good afternoon. I am Rolf Claessen, and welcome to IP Fridays. Today, our special guest is Michelle Sara King, the intellectual property team lead, senior international trade specialist, and the Stop Fakes team lead at the International Trade Administration in the United States Department of Commerce. Michelle, welcome to the podcast.

Michelle Sara King: Good afternoon. I am Michelle Sara King. I am the intellectual property team lead, the senior international trade specialist, and the Stop Fakes team lead at the International Trade Administration in the United States Department of Commerce. Happy to be here. Thanks, Rolf.

Rolf Claessen: So tell us, what is the Stop Fakes program of the US government, and where does it come from? What is the main goal? Tell us more about it.

Michelle Sara King: The Stop Fakes program was created by a presidential order in the Bush administration as an opportunity to provide outreach and education about intellectual property to businesses of all sizes as well as consumers. The name of the Stop Fakes program is a bit of a misnomer because it’s focused primarily on education, outreach, and engagement about intellectual property. It is not an enforcement mechanism per se, though we do provide opportunities and referrals for issues of enforcement. The Stop Fakes program is over ten years old and operates through a digital platform with a website, stopfakes.gov. We conduct outreach and engagement via virtual webinars, in-person roadshows, speaking at industry events, and specialized business consultations for businesses of all sizes, all at no charge. Our programs partner with various entities, including the US Export Assistance Centers, which operate in every state and are part of the International Trade Administration. The International Trade Administration was established over forty years ago by President Reagan as a key component of promoting and protecting US businesses internationally.

Rolf Claessen: That’s very impressive. What are some of the major accomplishments of the Stop Fakes program?

Michelle Sara King: One of our key accomplishments is the development of extensive resources and tools to help businesses protect their intellectual property. We’ve created guides, webinars, and training materials that are accessible to everyone. Additionally, we’ve held numerous events and consultations that have directly assisted businesses in safeguarding their IP. Another significant achievement is our collaboration with international partners to strengthen IP enforcement globally. This involves negotiating agreements, sharing best practices, and providing technical assistance to help other countries improve their IP systems.

Rolf Claessen: Can you give us some examples of the kind of support and resources you offer to businesses?

Michelle Sara King: Absolutely. We provide a range of resources, including IP toolkits tailored to specific industries, which outline best practices for protecting intellectual property. Our webinars cover various topics, such as how to register trademarks and patents in foreign markets, how to detect and respond to counterfeit goods, and strategies for enforcing IP rights. We also offer one-on-one consultations where businesses can get personalized advice and support from our team of experts.

Rolf Claessen: What do you see as the biggest challenges in the field of intellectual property today?

Michelle Sara King: One of the biggest challenges is the constantly evolving nature of IP threats. As technology advances, new forms of IP theft and counterfeiting emerge. Keeping up with these changes and developing effective strategies to combat them is a continuous challenge. Additionally, working with multiple countries with varying levels of IP protection and enforcement can be complex. It requires constant negotiation and diplomacy to achieve meaningful improvements. There’s also the challenge of raising awareness among businesses about the importance of protecting their IP and the steps they need to take to do so effectively.

Rolf Claessen: Given these challenges, what advice would you give to businesses looking to protect their IP internationally?

Michelle Sara King: First and foremost, businesses need to be proactive about protecting their IP. This means registering their trademarks and patents in key markets, monitoring for potential infringements, and taking action when necessary. Education is also crucial. Businesses should take advantage of the resources available to them, such as the Stop Fakes program, to learn about best practices for IP protection. Finally, working with experienced IP professionals can provide invaluable guidance and support. It’s important to have a comprehensive IP strategy that covers all aspects of protection and enforcement.

Rolf Claessen: Thank you, Michelle. It’s been a pleasure talking with you. Your insights and expertise are incredibly valuable to our listeners.

Michelle Sara King: Thank you, Rolf. I’m glad to have had the opportunity to share some of our work and hopefully provide some useful information to your audience.

Rolf Claessen: That wraps up this episode of IP Fridays. Thank you for tuning in, and we’ll be back with more discussions on intellectual property soon.

Profile of Angelo Mazza

Introduction:

Our guest today on the IP Friday’s podcast is Angelo Mazza. Angelo is a partner with the law firm, Gibney Anthony and Flaherty, LLP, located in New York City. Angelo counsels clients in developing brand protection and enforcement strategies and works extensively with law enforcement on intellectual property related crimes. He has trained over 60,000 law enforcement officials, including US Customs and Border Protection, Immigration and Customs Enforcement, and the Federal Bureau of Investigation. For over 30 years, Angelo has provided training sessions for law enforcement at the federal, state, and local levels through the International Anti-Counterfeiting Coalition and its foundation. As the current director of US training, he is the driving force behind the IACC’s educational materials to assist law enforcement in fighting intellectual property crimes. Welcome Angelo to the IP Friday’s podcast.

Experience with US Customs and Border Protection (CBP):

Hi Ken, thanks for having me. Great introduction. I should read that more often. Excellent, and for our listeners purposes, Angelo and I have known each other for many years as I first started practicing law with the law firm, Gibney Anthony and Flaherty. So it’s great to be talking to you once again. Glad to be here, Ken. So Angelo, how did you get your start working so much with US Customs and Border Protection, otherwise known as CBP? Well, you know, Ken, it really is funny. You know how sometimes you fall into something? I kind of fell into it. I started doing the training with CBP back in the early 90s. We were going around training them, how to identify a variety of different products, discussing some of the issues we were facing. We would also work with local law enforcement as well in terms of the training. And that evolved over time more and more integrating with what Customs was doing, dealing more on not necessarily specific training, but more enforcement related matters. So now I do interact a lot with CBP on a regular basis. And it’s really fun and interesting. There are a lot of great people that work for the organization.

Evolving Threats and E-Commerce:

And how have the threats CBP faces evolved over time? What have you seen as the development over the years? Well, you know, that’s a great question, Ken. And I don’t want to date myself. And I don’t say I was there when the first clipper ships were coming across the ocean. But CBP was created as an agency, a revenue agency, right? It was part of US Treasury when it first started out. And the folks there would deal with the merchant ships coming in, imposing the taxes, checking the goods coming in. And it was a pretty straightforward operation. They were built to deal with one ship at a time over the years, you’ve got bigger and faster ships, containerized cargo, air cargo, express consignment cargo. And so what’s happened is that in one way or another, it’s been the volume and the type of cargo that they see that has increased tremendously from the 1780s up until today. And in fact, probably Ken, as you know, working in IP, the biggest game changer is going to be e-commerce. That impacts a lot of what CBP, the threats it’s dealing with and how it’s got to build its response. The response that was good 50 years ago is not gonna work today.

De Minimis and Counterfeit Goods:

Yeah. And what would you say is the biggest issue? If you had to stack all the issues up side by side, what would be the biggest issue today facing CBP? Let’s go back to e-commerce and its progeny, okay? And with that is de minimis. De minimis is a significant issue that customs is facing now. In fact, there have been a number of press releases and alerts that deal with this specific problem. So in order to help the listeners, the viewers understand this better, let’s take a step back and kind of understand what de minimis is and its impact on the customer. And its impact on the way customs works and the threats that it creates to the health and safety of the public in the US. So de minimis was created to be a catch-all for small value parcels. Now, these are parcels that come in. And at one point it was a $200 threshold. Anything below $200 would pass duty-free. Minor cursory looks at it. Several years ago, that value was increased to $800. So with $800, wow, that’s a, you can squeeze a lot more stuff in it. And the counterfeiters and the bad actors took advantage of this because for them, what’s value? You know, it’s all relative. If they have a thousand counterfeit watches, well, they’re only worth a penny each, right? They’re gonna value them very low or phone cases or any manner of good can be undervalued. So that’s been a problem. So they can shift significant quantities of goods by undervaluing. They can also bring in goods by mislabeling, misidentifying them. So the packages that come in many times may say stuff, gift, or be misidentified entirely. I know there was an example at JFK where items were labeled as low value synthetic diamonds, which of course caught the eye because some of the packages do get checked. Turns out it was a, I think five or $8,000 shipment of genuine diamonds. So obviously in that case, they were trying to evade the duty. So you’ve got people using the system to evade duty. You’ve got people using the system to ship in counterfeit goods. Why? Simply based on the volume of packages that e-commerce has created over time. Customs is looking at, I believe the number is for this fiscal year, they’re gonna look at in the de minimis arena, 1.3 to 1.5 billion packages entering the US. Wow, that’s a huge number. It is you at JFK alone, they see approximately 24% of that number. LAX sees 23%. A quarter billion, a quarter million packages each, at least in those facilities coming through. And these are small parcels. And obviously if you’ve got that many packages, you can’t look at them all. The best you can do is target and they do have risk analysis models, which will look at where the package is coming from, where are they going? Is it a particular region, a particular country? Are there known bad actors that they’ve been tracking? Well, now we’ve talked about it in terms of skipping out on duty. We’ve talked about it in terms of trying to smuggle counterfeit goods into the country. Unfortunately, it’s also a conduit for illicit pharmaceuticals. So the folks who bring you fentanyl have used this as a way to bring in finished fentanyl pills, finished product. They bring in the precursor chemicals. They bring in the pill presses to finish the product all through the de minimis environment. So over the past couple of years, customs has become much more aggressive in trying to stop this. They’ve had a couple of great operations, Operation Artemis, Operation Apollo, which really target the fentanyl product. So what does that mean for everybody else? Okay, so fentanyl is getting a lot of priority. It’s top of the list because of the significant harm it causes to public health and safety. IP is still a priority. Unfortunately, when you’re talking about things that can kill you just by touching a few grains of it versus a counterfeit phone case, then you can see why the numbers for IP seizures are gonna go down, which they have. There have been fewer because the energies have really been focused on the issue of fentanyl. And that’s gonna continue to be the case until it’s brought under control, until they can bring those numbers down. The other thing too that CBP is doing is they are reaching out to the trade community and particularly the customs brokers to remind them on those packages in which a broker is effectuating clearance that they have a responsibility to know their importer and to know the content of those packages to be clear when clearing them to explain what is in the packages, to make sure they are manifested properly because if not, then brokers will be penalized, including ultimately they could lose their licenses if they are committing fraud upon CBP for the entry of the product.

Role of Rights Holders:

Wow, with such a flood of goods, Angelo, what can rights holders do today to protect themselves in this environment? You know, Ken, it’s gonna be tough. There are no easy fixes to the way in which commerce has shifted to the online environment. People are very comfortable now ordering their goods, going to any site, maybe there are some, they stay away from their little doobies. But in many cases, they don’t think, don’t give it a second thought really, to go online and order and know that their goods are likely coming from a foreign country. So how can a brand try to help customs prevent entry of these goods? Well, obviously the first thing you need to do is record your trademarks. The IPR Enforcement Branch, IPR Enforcement Branch with CBP, they have an online portal, very straightforward to use, very low cost. If you’re a brand, there’s no reason not to record. It is, I believe, $180. The length of the recordation mirrors the length of the trademark. So if you’ve just gotten a new trademark, you’ve got that full time on it. If you’re coming up for renewal, then you will get the renewal period. It applies to copyright as well. What this does, and mind you, there are close, I think last time I looked close to 19,000 active recordations in the CBP portal in IPRIS. And they don’t get to all of them, but the fact that you put it in there, if they see something that is suspicious, they can look up the mark, they can find out who the contact is. You can upload materials to help identify the goods. They can reach out to you. They may follow up. They may be able to make a determination based on those goods. Now that’s the recordation process. You have to go beyond that though, because that can’t stand alone. That’s a great way to get on the radar. To start and be noticed. Then you’ve got to take some additional steps. That’s your first low cost step. Second one would be, think about training. Think about providing training to the folks at Customs. They are the front line at the ports at all the borders. So there are two ways to do that. That is either you can do it online. Customs has a method. You could look it up on their site, and it’ll take you through the steps on setting up the online training for officers, import specialists, fines and penalties folks, for them to be able to understand your product. Now, we like to do, as you mentioned, and that great reading of the bio, that live training is where it’s at. I think after having done both, I do think the live training is better. It’s better because you are directly engaging with the folks at US Customs on a personal level. They’re able to ask you a question in the moment. They’re able to handle the genuine and the counterfeit goods. And you’re able to explain any trends or issues that you’re seeing. And you can go around to the ports. As you mentioned, IECC does have a program where basically on a monthly basis, they will hit one or two ports. In fact, next week, unfortunately, after this broadcast airs, we’re going to have been in San Juan, St. Thomas and Atlanta to conduct training for the folks there. Each of those ports requested the training, and they’re very excited to find out more because there are goods going through all of them, counterfeit goods, which are then available either in a tourist economy setting or they’re coming in via air cargo. Now, the other thing that you can do, you’ve recorded your mark, you’ve done your training. Now, I mentioned before that there’s an opportunity that there is a chance that customs will actually reach out to you for verification about the goods. They may have the taint. Now, they can’t move to seizure unless they have a good reason to do so. And if that’s the case, then you need to respond to those inquiries very quickly. This isn’t, “Oh, I’ll put it off a week or two.” Customs is under certain time constraints in which they have to complete detention runs. They can do 30 days, but then if they’re going to perfect seizure, they need to move to that. And with the volume of goods, the quicker they get goods, either seized or released, then that’s what they have to do. We have a rule here where any time we receive a CBP inquiry for one of our clients, it’s a 24 hour or less turnaround. Even if it’s to the point of just being able to say, “We’ve gotten your inquiry, we’ve got to do some research, we will find it out, we’re going to get back to you,” then that’s what we’ll do. It’s important to acknowledge the work that Customs is doing and to reassure them that you’re on it, that you are going to back up the steps that you’ve taken with some concrete action. Now, remember, there’s one important thing, though, Ken, that comes into play. When you’re providing information to Customs, it should not be a determinative statement. So you cannot say, “The goods are counterfeit.” That’s not what you’re saying. You should say, “The goods are inconsistent,” because the determination as to the legitimacy or counterfeit nature of the goods has to be made by Customs after weighing the information in front of them and that has been provided. So it’s best to stay away from those determinative statements and the inconsistencies should be as to the products where they’ve sent you images or there are samples in some cases. It’s got to be specific to those, not generic statements, because those are easy to knock down. You want statements that apply to the product that you’re dealing with on screen or on hand.

Success Stories:

And, Angelo, if Customs finds a package that looks suspect, how does the brand owner find out about it? Do they get pictures emailed to them? Are they– or you get phone calls? What’s the process like? OK, good question. So based on the recordation, you have put your contact info in there or the person responsible to work with Customs. We have gotten calls. We have gotten inquiries via email that include images. And then we will sometimes be able to do it based on those images. Other times, we do request additional images of the item to assist in identifying. And sometimes we talk about it over the phone and we’re able to help them. We tell them what routes the goods typically follow or what different items accompany the good in transit. And that helps them make and to discern their decision. Sure. And also maybe even looking out to see who is the sender. Where is it coming from, right? Well, there are certain things they cannot disclose. And they’re not supposed to disclose the sender or recipient to the rights holder. Because the information they can disclose is limited. And that’s why we really focus on those images of the goods. And sometimes those images are fantastic. You can tell with great certainty what you’re looking at. And other times, those images are a little difficult to work with. So we have to make a second request. I always tell the folks at Customs, let’s make believe you’re taking pictures of your family. You want to see it. Well said. We’re getting near the end. I have two more questions. Could you share with me maybe one or two successes briefly that you’ve seen over the years? I think the successes we see in general come from when we’re able to take the information we receive after a seizure is perfected through the seizure notices. And we enter that in the database. We send a C and D. When we’re able to connect that info with a real world brick and mortar target, that is where it’s fantastic. We’ve had instances where CBP sees goods coming in on a constant basis. They make a referral to HSI. They, in turn, open up a case. We have– recently, there was a case that involved well over $15 million of our client’s product being sold by people who were doing small-time importations. This was in a mail facility environment. They were bringing in five, 10, never more than maybe 15 items at a time. But just think, they turned that over the years into $15 million worth of product. Another one that we count as success, customs was seeing goods coming in, going to a particular address in the Carolinas. They alerted HSI. HSI is a very important thing. They alerted HSI. HSI decided to make a controlled delivery. They thought they were going into a house that maybe just had a few items. They were doing mail fulfillment because they were advertising on Facebook. They ended up seizing well over $5 million worth of products on hand, including counterfeit pharmaceuticals, luxury goods, jewelry, a whole host of products. And we were able to find the seizure notices and were able to tell them that, yes, we had sent notice. These people were aware that what they were selling was, in fact, counterfeit. So those are the great cases. Those are what we try to build. We always try to work with law enforcement. That has the greatest impact and sends the strongest message to the counterfeiters that, at some point, we are going to find you. It may not be today or tomorrow, but we’re in this for the long game.

US Chamber’s Memorandum of Understanding (MOU) with CBP:

So last question for today, Angelo, is that the US chamber has a significant memorandum of understanding with CBP. Can you tell our listeners a little bit about that? OK. Well, Ken, one of the things– and this goes to some of the changes at CBP. I recall when I first started working with customs, the rights holders were in their silo. Customs was over here in their silo. And you didn’t mix. The grains did not mix at all. But what’s happened over the years, I think, based on the changing nature of trade and the need for additional resources, customs has become more amenable to working with industry or its representatives. So what that means in terms of the chamber, they have worked to develop an MOU where brands, rights holders, are able to share worldwide seizure information with CBP. That gets put into their risk assessment models. It gets evaluated. And this may open up, in fact, a whole new range of importers and exporters who they were unaware of previously. So from my understanding, it is leading to some beneficial effects where goods are being seized, being looked at, that were not previously because of the data the companies are providing. This also extends into the donation program where companies can provide their technology tools that can assist customs with identifying product, whether it be barcode readers, RFID readers, all types of different things that companies can be available to custom. I think CBP realizes that the brands do have some of the resources that are needed to simplify the process. I think, too now, customs is looking more at technology, especially the use of AI and identifying goods coming in. Their newest generation of X-ray machines that they use on packages uses AI to discern what is in those boxes based on the algorithms. I mean, some of this is so amazing and so incredible in terms of where we’re going to be in just a few years and the fight against counterfeits and CBP’s role in that. Angelo, times really are changing quickly, and I’m so grateful for the opportunity to speak with you today on the IP Friday’s podcast. Thanks again so much. Thank you, Ken. Thanks for having me. And if anyone has any questions, I’m always free to answer. Thank you. Thank you, Angelo.

In this interview with Rolf Claessen on the IP Fridays podcast, João Negrão, the executive director of the EUIPO, discussed the office’s recent developments and future plans. Negrão highlighted the conclusion of the consultation phase for the EUIPO’s 2030 Strategic Plan, emphasizing key areas such as financial sustainability, efficiency, effectiveness, and the integration of emerging technologies like artificial intelligence. He noted the challenges posed by political and economic volatility and the expansion of EUIPO’s competencies, including geographical indications.

Negrão addressed the potential new role of the EUIPO in handling non-binding essentiality checks for standard essential patents (SEPs), should the proposed regulation be approved. He assured that the EUIPO would adapt to these new competencies using a project management approach. The interview also covered the EUIPO’s new mediation center for IP disputes, launched in November 2023. Negrão explained that while mediation and conciliation have been offered by the Boards of Appeal since 2011, the goal is to expand these services to first-instance proceedings to provide cost-effective and timely alternatives to traditional dispute resolution.

Celebrating the EUIPO’s 30th anniversary, Negrão reflected on its growth from a small office to an organization with 1,200 staff members, protecting almost five million trademarks and designs. He cited significant achievements, including the establishment of the Observatory on IP Infringements. The conversation touched on the DesignEuropa Awards, now held annually, which recognize excellence in design across various categories, including industry, small and emerging companies, lifetime achievement, and young designers. These awards aim to promote the design system and celebrate outstanding work. You can apply here:

https://www.euipo.europa.eu/en/designs/designeuropa-awards/how-to-apply

Negrão discussed the EUIPO’s new competence in geographical indications for craft and industrial products, aimed at protecting local products, promoting quality recognition, and supporting local producers and regions in Europe. He also highlighted the EUIPO’s expanding international cooperation with countries like Ukraine, Moldova, and Georgia, aiming to harmonize IP systems globally and support European businesses by ensuring robust, predictable IP systems in these regions.

Finally, Negrão outlined his personal goals for the EUIPO, emphasizing his desire to use his extensive experience to contribute to the office’s further development. He aims to focus on strategic planning, cooperation with national and international IP offices, and addressing issues such as IP infringements and the underrepresentation of women in the IP system. Overall, the interview underscored the EUIPO’s efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation.

Key Takeaways:

Overall, the interview highlighted the EUIPO’s ongoing efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation.

Here is a transcript:

Rolf Claessen: Today’s interview guest is the executive director of the EUIPO, João Negrão. Before this role, he served as the president of the boards of appeal at the EUIPO. João has been with the EUIPO for 14 years after having worked at INPI, the National Institute of Industrial Property of Portugal, for nine years. Thank you very much for being here.

João Negrão: Thank you very much for having me, Rolf. It’s a pleasure.

Rolf Claessen: The consultation phase for the EUIPO Strategic Plan 2030 closed on February 16th. What are the main topics of the Strategic Plan, and what are the next steps?

João Negrão: Yes, indeed. As you probably know, the EUIPO has developed incredibly since 1994. We are now celebrating our 30th anniversary. While we have many achievements to be proud of, there is always room for improvement. We’re interested in looking to the future to see where we can make positive changes. We face challenges, such as the current political and economic situation, which generates levels of uncertainty and volatility regarding the demand for trademarks, designs, and now geographical indications. Since we are a self-funded organization, we need to be very careful in planning our activities and implementing our budget. Financial sustainability, efficiency, and effectiveness are key topics within the new strategic plan.

Emerging technologies, such as artificial intelligence, will also significantly impact our work and the IP system overall. We need to leverage these technologies to improve our efficiency and help our users apply for and receive better results in a timely manner. Another challenge is the expansion of the IP system in Europe, with new competencies being entrusted to the EUIPO, such as geographical indications. We need to implement these competencies excellently to continue providing high-quality services. Additionally, addressing IP infringements remains crucial, especially with the rise of new technologies and virtual goods.

Rolf Claessen: Thank you for mentioning the new competencies of the EUIPO. I want to discuss a potential new competency. On April 27, 2023, the new commission published its proposal for a regulation on standard essential patents (SEPs). The European Parliament voted in favor on April 28. If the council approves, the EUIPO might handle non-binding essentiality checks for SEPs and mandatory mediation before litigation. Given that the EUIPO has limited experience with patents, how do you think the office can find enough experts with SEP experience, and how do you see this new development?

João Negrão: We should follow the methodology we’ve used since the EUIPO’s establishment in 1994. We support the commission and legislators with our expertise and then implement their decisions. We’ve successfully taken on trademarks, designs, and now geographical indications. If entrusted with SEPs, we will use a project management approach to identify gaps and needs and act accordingly. It’s still early to say how this will unfold, but we will ensure effective implementation as always.

Rolf Claessen: Approximately 95% of SEP-related licensing is settled through negotiation, with only a small percentage going to court. Given the existing guidelines from the European Court of Justice, why is there a need for additional regulation?

João Negrão: The decision for additional regulation lies with the European Commission and legislators. Our role is to implement whatever they decide. We have full trust in their decisions and believe they will be beneficial for Europe.

Rolf Claessen: Let’s switch topics. The EUIPO launched a new mediation center for IP in November last year. What has been your experience so far, and what benefits does this offer to IP owners compared to other entities like WIPO?

João Negrão: The mediation center was indeed launched last November. However, the Boards of Appeal have offered mediation and conciliation since 2011, with positive but limited results. Expanding mediation to all proceedings at the EUIPO, including first instances, provides an additional, complementary way to resolve disputes. We plan to offer mediation actively after the cooling-off period in oppositions, ensuring that we add value without disrupting what already works well.

Rolf Claessen: As a practitioner, when is mediation offered? Is it actively mentioned, or do parties have to decide themselves?

João Negrão: Currently, in the Boards of Appeal, mediation is mentioned when an appeal is filed. For oppositions, we plan to offer it actively after the cooling-off period if no agreement is reached. This approach aims to add value without disturbing the existing, effective cooling-off system.

Rolf Claessen: 2024 marks the 30th anniversary of the EUIPO. What have been the most important achievements of the past 30 years, and what can we expect in the future?

João Negrão: Celebrating our 30th anniversary, we reflect on our journey from a small office to one with 1,200 staff members. We’ve provided effective protection for almost five million trademarks and designs, impacting innovation significantly. Looking forward, we will implement new competencies like geographical indications and continue to fight IP infringements through our observatory. Additionally, we will maintain our cooperation efforts to harmonize the IP system globally, supporting European businesses.

Rolf Claessen: The EUIPO has been managing designs since 2003 and organizes the DesignEuropa Awards to promote talent and innovation. What are the award categories, and what are the criteria?

João Negrão: The DesignEuropa Awards, now annual, recognize excellence in design across several categories: industry, small and emerging companies, lifetime achievement, and a new category for young designers. This event celebrates the remarkable work of designers in Europe and aims to engage the next generation. We see an increasing usage of the design system, indicating that our promotion efforts are effective. The awards will take place in Riga, Latvia, this year.

Rolf Claessen: I will post a link to the DesignEuropa Awards application form in the show notes. Finally, what are your personal main goals for the EUIPO and for yourself in the coming years?

João Negrão: My personal goal is to contribute to the EUIPO’s further development and ensure it continues playing a relevant role in the IP and innovation system. Drawing on my experience from various roles within national and international IP organizations, I aim to support the EUIPO in its next strategic cycle. Collaborating with talented colleagues at the EUIPO and in the broader IP community, I hope to effect positive change and improve the IP system for all stakeholders.

Rolf Claessen: Thank you so much for the great interview and your time. I am very impressed. Thank you for being on IP Fridays.

João Negrão: Thank you very much, Rolf. It was a pleasure.

Meet us for the 10th Anniversary in Atlanta in the 20th May 2024 at 6 pm! We only give away 20 tickets so it will be a very exclusive event! Reserve your ticket here!

https://ipfridays.com/meetup

We are celebrating the 10th birthday of our podcast IP Fridays! Join us in Atlanta on Monday evening, the 20th May 2024 and meet us in person! Details will be posted on our website ipfridays.com and on social media!  We had started the podcast at the 2014 INTA Annual Meeting in Hongkong so we thought it would be a good idea to celebrate the 10th anniversary also during an INTA Annual Meeting!

In this episode of the IP Fridays podcast, we were joined by three experts from Wisdom International Patent and Law Office in Taiwan: founder George J.H. Huang, patent attorney Sandy Huang, and international affairs manager Zoe Kwong.

The discussion began with an overview of the latest guidelines for computer software patents in Taiwan, which now require that the software significantly utilizes hardware resources to be eligible for patent protection. This marks a departure from older guidelines and incorporates elements from Japanese regulations.

The experts also compared patent eligibility criteria between Taiwan and China, noting significant differences. In China, the focus is on using technical means to solve technical problems according to natural laws, which can often lead to challenges in proving the technical nature of inventions, particularly those that might be considered as business methods or mathematical rules.

Moving to trademarks, it was noted that Taiwan operates under a “first to file” system and does not require evidence of use at the time of application. This is particularly important for overseas applicants to understand, as early filing can prevent issues with trademark squatting. Taiwan does not participate in the Madrid Protocol, so international applicants must file directly in Taiwan.

Recent legislative updates were also covered, highlighting the new accelerated examination process for trademarks in Taiwan, which can significantly shorten the registration timeline. However, this process is best suited for clear-cut cases, as complex or disputed marks may still face lengthy examinations.

The episode concluded with a look at changes to the trademark agent system in Taiwan, which now requires agents to pass an exam and undergo annual training to ensure they maintain a high standard of professional knowledge.

Overall, the podcast provided a comprehensive look into the intellectual property landscape in Taiwan, offering key insights and strategic advice for navigating patent and trademark issues in the region.

Here is the full transcript:

We have three guests today on the IP Friday’s podcast from Wisdom International Patent and Law Office, a law firm located in Taiwan. They are Mr. George J.H. Huang, Ms. Sandy Huang, and Ms. Zoe Kwong.

George J.H. Huang is the founder of Wisdom International Patent and Law Office. Having over 27 years of experience in the intellectual property field, George is skilled at handling patent, trademark, and design matters, from drafting and prosecution to cancellation opposition and other contentious work. George has also been individually ranked and recognized as a recommended individual in the IAM Patent 1000, the WTR 1000, and the Asia IP Rankings. He is the author of two Japanese books, Taiwan Trademark Practice Guide and Taiwan Patent Practice Guide, which are highly praised by in-house counsels and critics.

Sandy Huang graduated from the National Taiwan University with a master’s degree in chemical engineering. She is a registered patent attorney and her practice focuses on patent drafting, prosecution, disputes, and invalidation in various countries, particularly in the areas of chemical engineering, mechanics, and semiconductors.

Sandy also has extensive experience in patent search, freedom to operate analysis, and patent portfolio management. And finally, Zoe Kwong is the firm’s international affairs manager. Welcome George, Sandy, and Zoey to the IP Friday’s podcast.

Thank you.

 Great, so let’s kick it off with our first question today.

Could you introduce to our listeners the current regulations on the eligibility of computer software patents in Taiwan?

Yes, sure. Our patent examination guidelines for computer software has been revised in 2021, and the criteria on determining eligibility, clarity, and invented staff was revised a lot. Regarding the eligibility, the old guidelines in Taiwan incorporated some regulations of EPO and USPTO, considering whether the invention is nothing more than the idea of doing that thing on a computer, which might be the old opinions of the USPTO before 2014, and whether there is further technical effect going beyond the normal physical interactions between the program and the computer.

But the new guideline in Taiwan is very different now. It introduced Japanese regulations and determined whether the information processing via computer software is realized through the utilization of hardware resources.

So under the current regulations in Taiwan, the most important part to comply with the eligibility requirements is to recite a substantial information processing in a claim, and state in a claim that the information processing is realized by the cooperation between computer software and hardware resources.

And what about China? Can you comment on that? Does Taiwan and China use the same language, and are there similar regulations?

Now, China’s regulation is quite different from Taiwan. China adopts a three-element test to determine whether the invention uses technical means to solve a technical problem and achieve the technical effects complying with the laws of nature. For example, if the invention itself solves a certain technical problem utilizing laws of nature, but not utilizing rules or methods set by human mental activities, and obtains technical effects other than effects produced by algorithm or business method itself, the invention meets the requirements of eligibility in China. But on the other hand, under current practice in China, whether the problem to be solved is technical is an important part. It is quite common that the patent examiner deems the problem to be solved is not technical. It is merely a business method or a math rule, and then directly considers the invention ineligible.

So in China, it would be very important to emphasize why the problem to be solved is technical in the specification.

Now, given that Taiwan and China have quite different regulations, what would be your suggestion for patent applicants if they wish to obtain patent rights in both Taiwan and China with one application? Can that be done?

Oh yeah, in my opinion. Though the regulations in Taiwan and China are quite different, the concepts are actually similar. They both focus on whether the claimed invention utilizes hardware to execute software in order to solve a technical problem. So I will suggest the applicants to fully illustrate application scenarios and the technical problems present in the scenarios when drafting the specification.

And applicants should also describe some examples in the specification to demonstrate how the algorithm is combined with various application scenarios and how to achieve technical effects after the combination. Then the technical means should also be emphasized in the claims. So the eligibility requirements in both of Taiwan and China may be fulfilled. And on the other hand, as we emphasize the technical means, technical problems and the technical effects a lot in the specification for the eligibility, it would also help a lot for the inventive step of the patent application in both of Taiwan and China.

Let me ask you a practical question. Do you ever run into situations where you’re able to get a patent registered in Taiwan but not in China? Does that ever happen where you only get it in one country?

So for our experience, we didn’t have that kind of experience since maybe the application might face some problems in China and they have to overcome more office actions in China. But yeah, maybe the claims obtained may be different from in Taiwan and China, but we can obtain the patent rights in both of China and all of Taiwan and China.

Okay. Let’s switch gears a little bit and talk about trademarks, which is very near and dear to my heart.

Are there any points to note for overseas applicants who would like to get a trademark registered in Taiwan?

I think the very first thing would be Taiwan adopts a versatile file system, which is different from US. That trademark rights go to versatile use. We recommend that applicants should file a trademark application in Taiwan as soon as they decide on the brand strategy. Also, Taiwan is not a party to the Madrid protocol. However, applicants may claim rights of priority based on an earlier application filed in one of the WTO member status within six months.

The second point to note would be trademark watching is quite important to foreign brand owners. Us applicants are not required to submit evidence of trademark use at a time of filing applications.

It is possible that a third party register, a trademark that is identical or similar to yours. What’s more, it becomes more difficult to invalidate the trademark if the trademark registration is older than five years. Similar to many countries, there are three ways to remove the trademark registration at the Taiwan IP office, which are opposition, invalidation and the cancellation. The opposition period is three months after a trademark is registered.

A request for invalidation filed within five years may rely on any grounds.

And for non-use cancellation, it is possible to cancel a trademark that has not been used for three years.

One of the biggest challenges is that brand owners sometimes discover the layer trademark were registered by squatters after five years. In that case, the brand owner must prove that the disputed mark was obtained in bad faith and the earlier trademark is a well-known trademark.

Therefore, trademark watching would be helpful to brand owners to stay ahead of potential infringement.

Yes, that is a very important point about trademark watching. I assume George, you do that for your clients. You regularly review trademark watch notices at your firm.

Yes. Yeah. Now let me ask you a question about what we call the well-known trademark status. How does one actually obtain a well-known trademark status in Taiwan? And why is it important?

I think first of all, there is no official well-known mark registry in Taiwan. If the trademark holder has not successfully proved their trademark is famous in Taiwan in previous proceedings, they will need to provide the evidence of use. From our past experience, we noticed that trademark owners have a difficult time improving their traumas are well-known in Taiwan.

All they do not know what should be provided to the Taiwan IP office. The owner should provide sufficient and objective evidence to prove that the trademark has widespread reputation in Taiwan and has been generally recognized by relevant enterprises or consumers.

Usually the Taiwan IP office would accept the invoices with time stamp and the trademark advertisements and the amount spent on advertisements and the promotions import and export the decorations. The product itself and et cetera.

The key lies in the lens of time of the trademark being used in Taiwan and the amount of money spent on promotions, especially the lens of time is the most important.

For example, we assist a food product brand to prove their unregistered trademark is famous by submitting evidence that they have been selling in Taiwan supermarkets for a few years and the participator in food export every year. At the end, we succeeded with successfully

canceled the third party marks but for a brand, for a newer brand. The brand owner will need to submit stronger evidence to prove the large volume of the advertisement. So late the trademark has reached the level of being famous in such a short period of time. Thank you.

 Very interesting, George. Thank you very much for that information.

Let’s talk about some of the recent changes in the law. Are there any new updates on Taiwan trademark laws and regulations that our listeners should know about?

Yes, in fact, the Taiwan legislature just passed the amendments of the trademark act in May, 2023. So there are four major changes. The first is the introduction of accelerated examination for trademark applications. The second is the trademark agent management system. The third is the addition of conditions of when nominated fair use is considered non-inversion. And the fourth is simplifying customs detention process. So now trademark holder can determine whether there’s infringement based on the photos on the customs new online platform.

Another updates would be starting from January, the IPO provides an option of electronic trademark and patent certificates. So now applicants may now opt for electronic certificates in Taiwan.

Interesting. And what, tell me more about the newly introduced trademark accelerated examination. Is there anything that applicants need to do? What’s the process exactly?

Oh, yes. So currently in Taiwan, it takes around eight months for the IB office to issue a first action. We actually have a fast track examination system in place starting from 2020. Although it’s free of charge and you need to fulfill certain documentary requirements. The examinations do take around five to six months with the fast track system. So it’s actually quite long. The new accelerated examination could effectively shorten the examination period to two months.

In the new system, the applicant will need to pay an acceleration fee of 6,000 Taiwanese dollars, which is approximately 200 US dollars and submit reasons and evidence to prove that the applicant has urgent needs to obtain trademark rights. So if a company wishes to register the trademark ASAP, we highly recommend going for the accelerated examination. For example, the owner already discovered in printments in Taiwan, the owner is negotiating a licensing agreement, all the products will be launched in Taiwan very soon.

However, it’s not always recommended to opt for accelerated examination. For example, if the descriptions of goods and services are too broad or unclear, the trademark applied for is a non-traditional trademark like a 3D trademark or color trademark, or the trademark is already in dispute.

In such cases, the IPO would issue a notification after the applicant to respond. The application process would then take longer and the benefits from reduced examination period will be wasted. So the applicants may think of the pros and cons of applying for the accelerated examination in Taiwan.

Very interesting to know about that new system. And I’m sure that will be helpful for many applicants who are trying to get their registrations issued quicker in Taiwan. So we’re gonna have our last question today. I were nearing the end of today’s podcast and that relates to the issue of being a trademark agent. Many foreign applicants do not realize that currently any person can be a trademark agent. What are the key differences in the new system?

So in fact, the IPO now has no restrictions on individuals whom I practice before the IPO on trademark matters. At present, any individual with a local domicile address can represent trademark applicant resulting in accurate submissions. So this is very bad for an applicant and applicants too. The new acts finally introduces a trademark agent management system to ensure trademark practitioners who are equipped with professional knowledge of trademark shall apply for registration before the IB office. Under the new system, the trademark agent must have passed a trademark agent exam organized by the government and attend training sessions every year. The new system is expected to protect the interests of trademark applicants and right holders best.

Very good. Well, I wanna thank you George, Sandy and Zoe for spending time with us today on the IP Friday podcast. Very interesting indeed. And thank you once again. Thank you.

Thank you. Thank you very much.

Find out more about Wisdom International Patent & Law Office here

https://www.wisdomlaw.com.tw/m/home.php

https://www.wisdomlaw.com.tw/m/412-1596-12151.php?Lang=en

Interview with Vice President and Head of Global Litigation and Disputes at Nokia Clemens Heusch – Patent Battle Nokia vs. Oppo – Unified Patent Court – Standard Essential Patents at the EUIPO – Episode 150 – IP Fridays

Challenges Enforcing Trademarks Online and Cybersquatting – Interview with Celeste Butera – UPC Caseload – USPTO AI Guidance – IP Fridays – Episode 149

Celeste Butera Profile

Interview With the Very Busy UPC Judge András Kupecz – Get the Perspective of a Judge at the Unified Patent Court – EU Lawmakers Vote for Rules Setting Up a Body at the EUIPO To Set SEP Royalty Rates – IP Fridays – Episode 148

Interview With Steven Adkins – Using the ITC to Your Advantage – Section 337 Investigations – UPC Statistics – Episode 147 – IP Fridays

Find more information about Steven Adkins here:

https://btlaw.com/en/people/steve-adkins

https://www.linkedin.com/in/steve-adkins-2228841a/