Category: International View Points

The Price of Globalization (Foreign Filing Licenses)

I have spent a couple of hours trying to figure out where I need to file a patent application, and I still don’t have a good answer.  The scenario is pretty simple, and an effect of globalization.  My US company client has a patent application that has five inventors.  The inventors include on American national, a Chinese national, a German national, a Swedish national, and a Turkish national.  I have been tasked with figuring out where we can file, to maintain the ability to file elsewhere internationally, and minimize the possibility of penalties.

The US has the most restrictive foreign filing license requirement.  It requires that any invention made by a US national, or for a US national, be filed initially in the US or in the PCT with the US as the search authority.  Alternatively, a foreign filing license could be obtained, without filing in the US.  Failing to follow this rule will result in loss of patent rights, and can result in significant penalties including fines and potentially jail time.

China requires an initial filing in China, for any invention conceived or completed in China, or receiving a foreign filing license.  However, that license may take up to four months to issue.  The penalty for failing to do so, is loss of Chinese patent rights. Of course if state secrets are disclosed, more severe penalties may be imposed.  But that is not a real risk in this case.

Germany requires a foreign filing license for any invention with a German inventor that has a secrecy aspect.  Getting that license may take up to four months.  The penalty is focused on disclosure of state secrets, and for that it is severe.  It is unclear whether there are any penalties if you fail to seek a foreign filing license, but no state secrets are disclosed.  At least one source said that these requirements only apply to national security related applications.

Sweden appears not to have any restrictions, at least in my review of their patent law. If you have any input on it, let me know.

Turkey appears to have no restrictions, at least in my review of their patent law.  If you have any input, let me know.

This kind of project is only going to become more common, as global corporations have inventors in various countries, working together.  If anyone knows of a good source that explains these laws, I would very much appreciate knowing about it.  Otherwise, I’m just going to keep adding to my little spreadsheet, as I encounter inventors from various countries.

Five IP Offices (IP5)

IP5 is a forum of the five largest intellectual property offices in the world that is being set up to improve the efficiency of the examination process for patents worldwide. The members of IP5 are:

  • the European Patent Office (EPO),
  • the Japan Patent Office (JPO),
  • the Korean Intellectual Property Office (KIPO),
  • the State Intellectual Property Office of the People’s Republic of China (SIPO), and
  • the United States Patent and Trademark Office (USPTO).

They are attempting to streamline prosecution, since many of the cases filed in one these patent offices are also filed in the others.  Their stated goal is ““The elimination of unnecessary duplication of work among the offices,enhancement of patent examination efficiency and quality, and guarantee of the stability of patent right”.

They have a very handy comparison (download) between the various members’ patent policies.  It’s a long document, but worth reading and keeping as a reference.  They also have quite a few other comparative statistics available.  Their project list is also ambitious.

There is a good chance that this cooperative process will reduce patent pendency, as well as improve patent prosecution quality.  I’m definitely planning on keeping an eye on them.

Interesting Lecture on doing business in Germany

I couldn’t find a description of this lecture, which I received via email invitation from an accountant my family in Germany has worked with over many years. I thought it was interesting enough to repost, so here it is.

Haeckl & Partner GmbH,
The Munich Network e.V. and
YES Partners
Cordially invite you to a discussion on

Doing Business in Europe
Bavaria – Your Key to Success

Followed by a networking reception with Bavarian specialties

When: Tuesday, November 1st, 2011, 5.00 pm – 8.00 pm
Where:

Stanford University Faculty Club
439 Lagunita Drive
Stanford, CA 94309
Red Lounge

Admission: $25 prepayment or $35 at the door

To make payment: Go to www.bridgellp.com and
go to the MAKE PAYMENT PAGE
To register: Contact slubbering@bridgellp.com
or contact Samantha at 818.988.2233

Agenda

Registration

5:00pm Welcome & Introduction (Moderation)
Introduction of the “German” team
E. J. Dieterle – Global Executive Search – YES Partners
John Gosch, CPA – Bridge, llp
Achim Hoelzle – FeldbergPacific Law Group

5:10pm Business Location Bavaria: Facts and Figures
Lucie E. Merkle| Executive Director,
Bavarian U.S. Offices of Economic Development, LLC

5:20pm Tax and Legal Aspects of Doing Business in Germany
Reinhard Häckl | CEO, Häckl und Partner GmbH

5:40pm Mobile Security: How to collaborate with Giesecke & Devrient
Thorsten Roeske | Head of Innovation and Alliances,
CTO Office, Giesecke & Devrient

5:50pm Enabling Technologies: How to collaborate with Robert Bosch
Cyril Vancura | Investment Director, Robert Bosch LLC

6:00pm Test & measurement, communications and broadcasting
equipment: How to collaborate with Rohde & Schwarz
Chris Eriksen, Region Sales Manager, Rohde & Schwarz

6:10pm How Silicon Valley TechVentures can benefit from
Munich Network´s strong TechIndustry members
Curt Winnen | General Manager, Munich Network e.V.

6:20pm How the German Silicon Valley Accelerator works
Dirk Kanngiesser | CEO
German Silicon Valley Accellerator Inc.

Reception with traditional Bavarian specialties

Zynga v. Vostu Update

As I mentioned in my prior post, the US judge in this case slapped a temporary restraining order on Zynga, so they could not enforce a Brazilian injunction against Vostu. The Brazilian injunction was obtained without a full hearing, and without notifying Vostu, in Brazil, after Zynga sued Vostu in the US court.

The Brazilian order has been stayed by the Brazilian court, while Vostu appeals. The US judge has therefore disolved the TRO, and said that no injunction is likely to be forthcoming. Zynga filed a stipulation with the court in which it said it would not pursue the recovery of any damages in Brazil that were recoverable in the U.S. litigation.

The two cases are going on in parallel again, but the US court has the damages issue in hand. Given that Zynga will not pursue damages in Brazil, they may choose to stop litigation there.

Be careful where you file your case: A Lesson from Zynga v. Vostu

If you look at the pictures you will see why Zynga said “ it is one thing to be inspired by Zynga games, but it is entirely different to copy all of our key product features…”

Vostu’s purpose, according to Zynga is to copy literally every feature of every Zynga game.

Zynga sued Vostu in District Court in California, on June 16th.

Then, they filed another lawsuit on August 2nd in Brazil, Vostu’s home country. The Brazilian judge granted an injunction quickly, telling Vostu it had to shut down its games within 48 hours.

The U.S. District Judge, Edward Davila was not amused. He issued an order restraining Zynga from enfordcing the Brazilian decision. In particular, he noted “Zynga—which chose the U.S. forum first—now seeks to enforce an injunction it obtained abroad that would paralyze this Court’s ability to decide this case.”

So, while Zynga won a round in Brazil, their decision to file the case initially in the U.S. prevents them from enforcing the Brazilian court’s decision.

Lesson learned: Choose your jurisdiction carefully. Especially when looking for an injunction, consider finding a fast jurisdiction, and filing there first. U.S. judges will not look kindly upon a later suit impacting their jurisdiction.

Patent Law in a Global World

Judge Rader expressed his opinions about foreign rules, and the flaws of the U.S. system in some detail. He suggested that the fundamental job of the courts is to “facilitate not frustrate marketplace.” He also strongly suggested that the U.S. must continue improving its ability to innovate, and protect innovation, and that includes the ability to enforce patent rights.

Chief Judge Randall Rader of the Court of Appeals for the Federal Circuit spoke at Santa Clara University School of law, discussing Patent Law in a Global World.  He addressed questions from Julie Stephenson, Assistant General Counsel at Synopsys, Colleen Chien, Assistant Professor at SCU Law, and Marta Beckwith, Director of IP Litigation at Cisco Systems.

Judge Rader expressed his opinions about foreign rules, and the flaws of the U.S. system in some detail.  He suggested that the fundamental job of the courts is to “facilitate not frustrate marketplace.”  He also strongly suggested that the U.S. must continue improving its ability to innovate, and protect innovation, and that includes the ability to enforce patent rights.

Continue reading “Patent Law in a Global World”