International Intellectual Property Law

October 23, 2015

International Intellectual Property Law: Intellectual Property and the Trans-Pacific Partnership Agreement

On October 4, 2015, Ministers of the 12 Trans-Pacific Partnership (“TPP”) countries – Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States, and Vietnam – announced conclusion of their negotiations. The result is an agreement that has been promoted as enhancing economic growth; supporting the creation and retention of jobs; enhancing innovation, productivity and competitiveness; raising living standards; reducing poverty; and promoting transparency, good governance, and enhanced labor and environmental protections.

TPP’s chapter regarding intellectual property (“IP”) covers patents, trademarks, copyrights, industrial designs, geographical indications, trade secrets, other forms of intellectual property, and enforcement of intellectual property rights, as well as areas in which participating countries agree to cooperate. The IP chapter will make it easier for businesses to search, register, and protect IP rights in new markets, which is particularly important for small businesses.

The chapter establishes standards for patents, based on the World Trade Organization’s (“WTO”) agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), and international best practices. On trademarks, it provides protections of brand names and other signs that businesses and individuals use to distinguish their products in the marketplace. The chapter also requires certain transparency and due process safeguards with respect to the protection of new geographical indications, including for geographical indications recognized or protected through international agreements. These include confirmation of understandings on the relationship between trademarks and geographical indications, as well as safeguards regarding the use of commonly used terms.

May 28, 2015

New EFF “404” Report Shows How Restrictive Copyright Policies Stifle Online Speech Worldwide

By Overhauser Law Offices, LLC

San Francisco, California – Overly-broad intellectual property (“IP”) laws in Russia, Colombia, and Pakistan – which U.S. trade regulators say aren’t tough enough – stifle access to innovation and threaten artists, students, and creators around the globe with prison, censorship, and state prosecution, the Electronic Frontier Foundation (“EFF”) said in a new report released recently.

EFF’s “Special 404 Report” is a response to the “Special 301 Report.” The latter report, which EFF called biased and “a deeply flawed annual assessment of international intellectual property rights policies,” was released in April by the Office of the U.S. Trade Representative (“USTR”). The Special 301 Report is used to pressure countries to adopt IP laws supported by some powerful business interests.

In a first-of-its-kind analysis countering what EFF called the USTR’s “name and shame” tactics, EFF argues that the Special 301 Report paints a one-sided picture of IP rights and fails to disclose the damaging results of draconian IP policies. Examples include a human rights activist in Russia who was targeted by prosecutors using criminal copyright law, a biologist in Colombia who faces prison for sharing research, and students in Pakistan who struggle to exercise their rights under local law to study academic papers.

May 27, 2015

Chinese Professors Among Six Defendants Charged with Economic Espionage and Theft of Trade Secrets

By Overhauser Law Offices, LLC

Los Angeles, California – Chinese professors have been accused of having stolen valuable technology from Avago Technologies and Skyworks Solutions to benefit a university in the People’s Republic of China.

On May 16, 2015, Tianjin University Professor Hao Zhang was arrested upon entry into the United States from the People’s Republic of China (“PRC”) in connection with a recent superseding indictment in the Northern District of California, announced Assistant Attorney General for National Security John P. Carlin, U.S. Attorney Melinda Haag of the Northern District of California and Special Agent in Charge David J. Johnson of the FBI’s San Francisco Division.

The 32-count indictment, which had previously been sealed, charges a total of six individuals with economic espionage and theft of trade secrets for their roles in a long-running effort to obtain U.S. trade secrets for the benefit of universities and companies controlled by the PRC government.

February 20, 2015

United States Deposits Instrument of Ratification to Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) recently announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) with the World Intellectual Property Organization (“WIPO”) in Geneva, Switzerland. This marks the last step in the membership process for the United States to become a Member of the Hague Union. The treaty will go into effect for the United States on May 13, 2015.

Currently, U.S. applicants wishing to pursue protection for industrial designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions where industrial design rights are desired. When the Hague Agreement enters into force for the United States, it will be possible for U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies. The Hague system for the protection of industrial designs provides a practical solution for registering up to 100 designs in over 62 territories with the filing of one single international application.

“U.S. accession to the Geneva Act of the Hague Agreement will provide applicants with the opportunity for improved efficiencies and cost savings in protecting their innovative designs in the global economy,” said Deputy Under Secretary for Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “We are extremely excited about joining the Hague Union and contributing to the continued expansion and development of the Hague system which facilitates protection of industrial designs in design registration and examination systems alike.”

February 16, 2015

Third Member of International Computer Hacking Ring Pleads Guilty to Hacking and Conspiracy to Steal Intellectual Property; Charges Against Indiana Defendant Pending

By Overhauser Law Offices, LLC

Delaware – A third member of an international computer hacking ring has pleaded guilty to conspiring to break into computer networks of prominent technology companies to steal more than $100 million in intellectual property and other proprietary data.

Nathan Leroux, 20, of Bowie, Maryland, pleaded guilty to conspiracy to commit computer intrusions and criminal copyright infringement based on his role in the cyber theft of software and data related to the Xbox One gaming console and Xbox Live online gaming system, and popular games such as the “FIFA” online soccer series; “Call of Duty: Modern Warfare 3;” and “Gears of War 3.” Leroux has been in custody since attempting to flee into Canada from Buffalo, New York, on June 16, 2014. A sentencing hearing is set before U.S. District Judge Gregory M. Sleet of the District of Delaware on May 14, 2015.

Sanadodeh Nesheiwat, 28, of Washington, New Jersey, and David Pokora, 22, of Mississauga, Ontario, Canada, previously pleaded guilty to the same conspiracy charge on Sept. 30, 2014. They remain in custody pending their sentencing hearings, which are scheduled for April 2015. Pokora’s guilty plea is believed to have been the first conviction of a foreign-based individual for hacking into U.S. businesses to steal trade secret information. Charges against a fourth defendant, Austin Alcala, 19, of McCordsville, Indiana, remain pending.

According to Leroux’s admissions in connection with his guilty plea, he was part of the hacking conspiracy between January 2011 and September 2012. During that period, hacking group members located in the United States and abroad gained unauthorized access to computer networks of various companies, including Microsoft Corporation, Epic Games Inc., Valve Corporation and Zombie Studios. The conspirators accessed and stole unreleased software, software source code, trade secrets, copyrighted and pre-release works, and other confidential and proprietary information. Members of the conspiracy also allegedly stole financial and other sensitive information relating to the companies – but not their customers – and certain employees of such companies.

Specifically, the data theft targeted software development networks containing source code, technical specifications and related information for Microsoft’s then-unreleased Xbox One gaming console, as well as intellectual property and proprietary data related to Xbox Live and games developed for that online gaming system.

Leroux admitted in court that he and others used the stolen intellectual property to build, and attempt to sell, counterfeit versions of the Xbox One console before its public release in November 2013. In July 2013, the FBI intercepted a counterfeit console built by Leroux, which was destined for the Republic of Seychelles.

Leroux also admitted that he developed a software exploit that allowed him and others to generate millions of “coins” for the FIFA soccer games playable on the Xbox Live platform. These coins are the virtual, in-game currency used to build a “FIFA Ultimate Team” in the games. Without the authorization of Electronic Arts, the intellectual property rights holder to the FIFA games, Leroux and others sold bulk quantities of the “FIFA coins” via online black markets.

The value of the intellectual property and other data stolen by the hacking ring, as well as the costs associated with the victims’ responses to the conduct, is estimated to range between $100 million and $200 million. To date, the United States has seized over $620,000 in cash and other proceeds related to the charged conduct.

This case was investigated by the FBI, with assistance from the Criminal Division’s Office of International Affairs, the U.S. Department of Homeland Security’s Homeland Security Investigations and Customs and Border Patrol, and the U.S. Postal Inspection Service. The investigation also has been coordinated with the Western Australia Police and the Peel Regional Police of Ontario, Canada.

The case is being prosecuted by Trial Attorney James Silver of the Criminal Division’s Computer Crime and Intellectual Property Section and Assistant U.S. Attorney Edward J. McAndrew of the District of Delaware.

Assistant Attorney General Leslie R. Caldwell of the Justice Department’s Criminal Division, U.S. Attorney Charles M. Oberly III of the District of Delaware and Special Agent in Charge Stephen E. Vogt of the FBI’s Baltimore Field Office made the announcement.

October 24, 2014

USPTO and the State Intellectual Property Office of China Launch Direct Electronic Priority Document Exchange

By Overhauser Law Offices, LLC

Washington, D.C. – New free, secure service simplifies patent application procedures.

The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) and the State Intellectual Property Office of China (“SIPO”) recently launched a new free service that will allow the two offices to electronically exchange patent application priority documents directly. This new service will help streamline the patent application process and reduce costs for businesses, which are increasingly pursuing patent rights globally.

The new service will allow the USPTO and the SIPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant. With this new service, applicants will no longer need to obtain and file paper copies of the priority documents; however, they are still responsible for ensuring that priority documents are provided in a timely manner.

October 13, 2014

Indiana Teen Indicted for Theft of Intellectual Property Valued More Than $100 Million

By Overhauser Law Offices, LLC

District of Delaware – Four members of an international computer hacking ring were

indicted for stealing gaming technology and Apache helicopter training software. Two have already pled guilty.

Four members of an international computer hacking ring have been charged with breaking into computer networks of prominent technology companies and the U.S. Army and stealing more than $100 million in intellectual property and other proprietary data. Two of the charged members have already pleaded guilty. The alleged cyber theft included software and data related to the Xbox One gaming console and the Xbox Live online gaming system; popular games such as “Call of Duty: Modern Warfare 3” and “Gears of War 3”; and proprietary software used to train military helicopter pilots.

July 28, 2014

Copyright Office Requests Comments on Music Licensing

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Copyright Office has undertaken a study to evaluate the effectiveness of current methods for licensing musical works and sound recordings. It seeks additional comments on whether and how existing music licensing methods serve the music marketplace, including new and emerging digital distribution platforms.

An initial round of written comments and roundtable sessions were held, during which a number of significant issues were discussed. The Copyright Office believes these issues merit additional consideration.

First, the two federal district courts overseeing the antitrust consent decrees governing the largest performance rights organizations (”PROs”), American Society of Composers, Authors and Publishers (”ASCAP”) and Broadcast Music, Inc. (”BMI”), held in separate opinions that under those decrees, music publishers could not withdraw selected rights – such as ”new media” rights – to be directly licensed outside of the PROs; rather, a particular publisher’s song catalog must either be ”all in” or ”all out.” Following these rulings, both in public statements and at the recent roundtables, certain major music publishers have indicated that, if the consent decrees remain in place without modification, they intend to withdraw their entire catalogs from the two PROs and directly license public performances. Such a move would affect not only online services, but more traditional areas of public performance such as radio, television, restaurants, and bars.

May 29, 2014

IU McKinney Welcomes Internationally Renowned IP Scholar to Law Faculty

By Overhauser Law Offices, LLC

Professor Xuan-Thao Nguyen, a professor at the Southern Methodist University Dedman School of Law, will join the faculty and lead the Center for Intellectual Property Law and Innovation at the IU Robert H. McKinney School of Law. She will join Indiana University in August 2014.

Professor Nguyen is internationally recognized for her teaching and scholarship in the areas of intellectual property, secured transactions, bankruptcy, licensing, and taxation in her teaching and scholarship. She has co-authored several treatises and casebooks and around 30 law review articles in the areas of intellectual property, secured financing, bankruptcy, and taxation.

“It is an honor and privilege to be the Gerald L. Bepko Chair in Law and Director of the Center for Intellectual Property and Innovation at the Indiana University Robert H. McKinney School of Law,” Professor Nguyen said. “I look forward to working with my colleagues, students, alumni and friends in building a vibrant Center for all and a special home for training future leaders around the world in IP and related fields.”

May 8, 2014

USPTO Creates New Office of International Patent Cooperation

By Overhauser Law Offices, LLC

WASHINGTON, D.C. – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) recently announced the creation of a new Office of International Patent Cooperation (“OIPC”). The OIPC will be led by Mark Powell who will serve as USPTO’s first Deputy Commissioner for International Patent Cooperation. Deputy Commissioner Powell will report directly to the Commissioner for Patents Margaret (Peggy) Focarino. The establishment of the OIPC reflects USPTO’s strong commitment to work with global stakeholders and intellectual property (“IP”) offices to develop means to increase quality and create new efficiencies within the complex processes of international patent rights acquisition, and its commitment toward global patent harmonization, which both protects America’s ideas and makes it easier to do business abroad.

“The establishment of the Office of International Patent Cooperation reflects the USPTO’s strong commitment to the IP community in improving the international patent system,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee. “It will allow us to increase certainty of IP rights while reducing costs for our stakeholders and moving towards a harmonized patent system.”

While the USPTO has been effective in carrying out its international mission through such programs as the Patent Prosecution Highway, the Global Patent Search Network, the Cooperative Patent Classification system, and the new Global Dossier Initiative, creation of the new office will enable USPTO to focus dedicated resources to better implement its international patent cooperation efforts. The main focus of the office, working in concert with the Office of Policy and International Affairs and the Office of the Chief Information Officer, is to provide optimized business process solutions to the international patent examination system for examiners and external stakeholders.