As more and more Chinese enterprises "go out" to participate in
international competition and cooperation, cross-border protection of
intellectual property rights has become a compulsory course for innovative
enterprises to explore the international market. In order to help enterprises
and the general public with overseas intellectual property related needs,
Longyuan Intellectual Property Overseas Intellectual Property Service Platform
will continuously push overseas national intellectual property disputes
emergency services and risk prevention and control service guidelines.
This issue mainly pushes you the first article - American Intellectual
Property Dispute Emergency Service and Risk Prevention and Control Service
Guide. The content is comprehensive and practical. Don't forget to collect and
pay attention.
U.S. Intellectual Property Laws and Regulations and Related
Institutions
The intellectual property protection system in the United States is very
complete, with various systems and regulations, and the amount of compensation
for infringement of intellectual property rights is very high. Taking common
patent disputes as an example, the amount of damages awarded for found
infringement ranges from a few million dollars to hundreds of millions of
dollars. The United States is also the export destination of most Chinese
companies, so it is necessary to be fully prepared in the face of intellectual
property disputes in the United States.
The intellectual property laws in the United States mainly include the
following:
Patent Law
Including the protection of invention patents, appearance patents and plant
patents;
Copyright Law
Copyright protection of original works fixed in any tangible medium of
expression;
Trademark Law
The registered signs can be names, symbols, words, logos, patterns,
etc.;
Trade Secret Law
The objects of protection can be product formulas, designs, edited data,
customer lists, etc.;
U.S. Tariff Act of 1930
Contains the famous Section 337;
Antitrust Law
Once a company is found to be suspected of monopoly, it may face various
penalties such as fines, imprisonment, compensation, civil sanctions, forced
dissolution, and separation.
In addition, each state in the United States has its own independent laws,
as well as its own regulations on trademarks, copyrights, trade secrets and
unfair competition, which may differ slightly from federal laws, which should be
noted in litigation.
Intellectual property management agencies in the United States include:
Patent and Trademark Office
Mainly responsible for the registration, examination and disclosure of
patents and trademarks;
Copyright Office under the U.S. Library
Mainly responsible for the management of copyright registration in the
United States.
In the judicial aspect of the United States, the Federal District Court is
responsible for hearing intellectual property infringement cases involving
copyrights, registered trademarks, patents, plant varieties, integrated circuit
layout designs, etc. Appeal cases are under the jurisdiction of the Federal
Circuit Court of Appeals. If you disagree, you can appeal to the U.S. Supreme
Court. More specifically, the U.S. International Trade Commission (ITC) has
jurisdiction over cases under Section 337 of the U.S. Tariff Act (1930),
including cases of imported goods that violate intellectual property rights.
How to deal with intellectual property risks
Responding to Warning Letters
First, check the warning letter to check whether the sender is qualified to
issue a warning. If it is not the right holder, ignore the warning letter;
secondly, determine whether the infringement reason in the warning letter is
sufficient, and whether the right holder proposes to stop the infringement,
compensate or license requirements. In order to properly handle the alleged
infringement, one should try to understand the purpose of the other party. The
purpose of most patent infringement lawsuits is to gain a dominant market
position, that is, to affect the defendant's operation, attack the defendant's
business, the market, reduce its threat, and expand its own market.
If the facts stated by the sender are true, the R&D department, the
legal department, and external lawyers or experts should be quickly organized to
conduct a detailed product infringement analysis. If it is judged that the
infringement is not established, you can directly reply to the warning letter to
inform you that there is no infringement; if there is infringement, you should
investigate the sales volume, sales area, and sales price of the infringing
product, and also investigate the original sales volume, sales area, and sales
price of the patented product in the market. price, etc., and analyze its past
growth rate and future growth rate to infer the amount of damages that may be
claimed.
In addition, if there is an infringement, the company should consider
whether it can be circumvented and whether it can be reconciled with the other
party. If it cannot be reconciled, it should directly prepare for litigation. In
addition, although a warning letter is issued, it is very likely that the
patentee will not file a lawsuit, so it is sufficient to reply to the legal
opinion on non-infringement provided by the lawyer. This non-infringement legal
opinion before the lawsuit is very important. If the legal opinion is not
replied, it may be judged as intentional infringement in the later litigation
process, and the compensation amount will be several times the statutory
compensation amount. If, after analysis, it is found that the infringement may
be infringed, and it is not possible to directly judge whether the patent right
is stable, the reply should only include a general summary statement.
deal with lawsuits
(a) Initiation of an affirmative action
After receiving the warning letter from the patentee, if you think that the
possibility of infringement is very small, you should file a request for
confirmation of the invalidation of the patent and that the product is not
infringing, or submit a request for patent invalidation to the US Patent and
Trademark Office as soon as possible to the district court with jurisdiction. ,
so as to solve basic problems such as whether the patent is valid, the scope of
protection and whether the product is infringed.
(b) Plaintiff’s Complaint Review
After receiving the complaint, request the court to clarify the content of
the complaint as soon as possible, and delete unclear, unnecessary or redundant
content. Jurisdiction objections can also be raised to prolong the litigation
time of the other party and consume the patience of the other party. It is also
possible to file a patent invalidation, consult the patent application process
information, the patent has expired, deny infringement, etc.
(c) Gather evidence
If a decision is made to respond, evidence should be collected from
multiple sources. Such as intellectual property rights certification materials,
research and development records, legal documents of product technology sources,
intellectual property analysis reports issued by third parties, and intellectual
property related rules and regulations.
(d) File a counterclaim
If there is a bargaining chip that can counterclaim the plaintiff, such as
having a patent right in the United States, and the plaintiff's product may be
suspected of infringement, you can file a counterclaim with the plaintiff as the
defendant, and consider whether to reach a settlement with the other party
according to the change of the situation in the lawsuit, thus eliminating the
two parties. a lawsuit.
Responding to a Temporary Ban
The arrival of a temporary injunction often catches exporters off guard, so
if they are faced with a temporary injunction, they should try to delay the
plaintiff’s application process while collecting evidence that can overturn the
temporary injunction. If the court grants the interim injunction, it should be
followed, as obstruction of justice or disobedience of the injunction may
constitute a contempt of court, which could result in substantial damages.