International Intellectual Property Rights:

1
International Intellectual Property
Rights Global Perspectives and Practical
Strategies For Indian Industry Alan J Kasper
2
International Intellectual Property
Rights Global Perspectives and Practical
Strategies For Indian Industry
Alan J. Kasper partner
Sughrue Mion PLLC
3
HOW TO DEVELOP A GLOBAL STRATEGY FOR IP TODAY

• RECOGNIZE IP Is a Limited Asset -
  Geographically, Legally and Temporally
• CONSIDER The Value of Foreign IP to New Product
  Development and Sales
• PLAN A Global IP Strategy Based on the
  Future Role of Specific Countries In
  Your Business Development
• FOCUS ON
• The IP Strategy of your Asian Competitors
  especially in the U.S.
• The Important Foreign Markets with Strong IPR
  especially the U.S.
• The IP Issues that May Arise

4
EVALUATING YOUR STRATEGY FOR INTELLECTUAL
PROPERTY IN DEVELOPED ECONOMIES?

• HOW IMPORTANT ARE SALES IN OTHER COUNTRIES TO
  YOUR BUSINESS?
• RD RESOURCE
• Parts/Product SUPPLIER
• CUSTOMER
• WHAT IS YOUR IP STRATEGY FOR OTHER COUNTRIES ?
• WHAT IS YOUR COMPETITORS IP STRATEGY THERE?
• WILL THE IP BALANCE FAVOR YOU IN 10 YEARS?
• THE ANSWER A KEY LESSON FROM HISTORY!

5
History 101Who Owns U.S. IP TODAY?

• The Leaders for
• 2007
• IBM (3,125)
• Samsung (2,723)
• Canon (2,047)
• Matsushita (1,972)
• Intel (1,864)
• Toshiba (1,734)
• Microsoft (1,662)
• Micron (1,484)
• Hewlett Packard (1,470)
• Sony (1454)

• The Leaders 25 Years Ago
• IBM
• GE
• Bayer
• Ciba-Geigy
• ATT
• Westinghouse
• U.S. Phillips
• Hitachi
• GM
• RCA

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What Do The Numbers Show?

• At 30K-50K/ patent a significant investment
  from Japan - Korea and China growing
• Minimal investment from Developing Countries
• Large non-US filing is consistent with U.S. as
  primary market

• FY 2007
• Total of 184,377 Patents Granted (49 non-US)
• Resident Inventors
• U. S. - 94,618
• Japan 37,860
• Korea 4,198
• China 1,109
• India 339
• Brazil- 150

7
History 102 Why the Investment by Japan?

• ECONOMIC IMPACT
• Unprecedented Assault With IP Litigation By U.S.
  Companies in Past
• Recognized Importance of the U.S. Market
• Consumers for End Products High Profitability
• Stable and Growing Economy
• CHANGED U.S. LEGAL ENVIRONMENT -
• Establishment of the U.S. Court of Appeals for
  the Federal Circuit (CAFC)
• Pro-Patent Philosophy
• Consistency in Interpretation and Enforcement
• Increased Use of Jury Trials
• Increased Damage Awards
• Demonstrated Strength of Injunctive Relief
• IN SHORT A REASSESSMENT OF STRATEGIC U.S. IP
  POLICY
• Recognition That Japanese Company IP Strategies
  Were Inadequate
• Offensive
• Defensive

8
Current Events Notable Results of the Shift
Today

• U.S. Patenting Japan/ US is 12 and Japanese
  Filings are Increasing
• Japanese Litigating Increasingly IP Plaintiffs
  (U.S. District Courts and ITC)
• Japanese Licensing - Income from U.S. Patents Has
  Grown
• Japanese Defending - Increased Number of Cross
  Licenses in the US
• Japanese Selling Sales (Imported and US-made)
  Increasing

9
History 103 Similar Shifts in Korea and China

• Korean Company Strategy
• To Be Among Top Global Filers
• Top 10 in US, China and India
• To Aggressively Defend IP Litigation
• To Aggressively Enforce and License
• Chinese Company Strategy
• To Increase Filings in China
• 62 of over 245,000 applications filed by
  domestic entities
• Compare to 20 of about 35,000 application in
  India
• To Enforce Patents Domestically
• No Apparent International Enforcement Strategy as
  yet

10
IN SUM

• CORPORATE JAPAN HAS
• LEARNED FROM ADVERSITY
• INVESTED HEAVILY IN IP
• U.S. AND OTHER COUNTRIES
• INTEGRATED IP INTO ITS BUSINESS STRATEGY
• ACTIVELY UTILIZED AND BENEFITED FROM IP
• SUPPORTING NEW PRODUCT DEVELOPMENT AND SALES
• CORPORATE KOREA IS FOLLOWING CLOSELY
• CORPORATE CHINA IS BEGINNING TO FOLLOW
• What is Corporate Indias Strategy?

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Determine The Potential Value of Foreign IP To
Your New Products

• Protection of Market Share and Margins
• Establish Barriers to Competition Abroad
• Prevent Copying by Off Shore Sources (even your
  own suppliers and their affiliates)
• Prevent Intrusion into Your Foreign Markets
• Licensing
• Provide a Basis for Supplemental Income
• Provide a Basis for Price Differential
• Provide a Legal Basis for Strategic Alliances

12
Plan Your Global IP Strategy

• MOST IMPORTANTLY - Keep a Perspective On the
  Future
• Patents have a 20 Year Life
• Core Technologies May be Longer
• Carefully Evaluate and Select Venues for IP
  Investment
• Carefully Manage Your Portfolio
• Add Aggressively
• Cut Ruthlessly

13
EVALUATE the Legal Environment of a Country

• WHAT IS THE CURRENT VALUE OF IP
• Types of Patents
• Standards of Patentability
• Competence of Examination
• Cost of Patenting
• Scope of Enforceability
• Strength of the Legal System
• Bias Against Foreign Litigants
• LIKELY FUTURE IMPROVEMENT IN LAW AND ENFORCEMENT
• What and When?

14
SELECT the Country Based on Business Goals

• Quantify Your Goals
• Protection and Control of Local Manufactures
• Control and Regulation of Competitors Activities
  in a Country that is Competitors
• Home Country
• Major Sales Market
• Major Supplier
• Major Manufacturer
• Provide For Freedom to Manufacture AND/OR Sell
• Provide for Future Licensing
• Offensive (Income)
• Defensive (Exchange)

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Manage a Tight Budget

• Carefully Select Inventions for U.S. and Foreign
  Filings
• Regularly Evaluate Pending U.S. and Foreign
  Applications and Cut As Appropriate
• Employ Techniques to Defer Costs for U.S. and
  Foreign Filings
• Pending More Knowledge of Importance (off.
  def.)
• Pending More Knowledge of Patentability
• Pending Allocation of More funds
• Use of U.S. Provisional and/or PCT Applications

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• ALAN J. KASPER
• Alan J. Kasper is a partner in the Washington
  D.C. Intellectual Property firm of Sughrue Mion,
  PLLC, where he has been practicing law since
  1985. His practice focuses on patent matters and
  consists primarily of prosecution, litigation and
  counseling for a wide variety of clients in the
  advanced electrical, semiconductor,
  computer-based and mechanical technologies. Alan
  was the resident partner in the firm's Tokyo
  office between 1990 and 1994 and presently
  manages the firms International Department.
• A native of New York, Mr. Kasper graduated from
  the State University of New York at Buffalo with
  a B.S. in Electrical Engineering and obtained a
  JD at the Georgetown University Law Center He
  worked as an Examiner in the U.S. Patent and
  Trademark Office and was employed by the
  Communications Satellite Corporation (COMSAT),
  where he served as Assistant General Counsel and
  head of the corporation's Patent Department.
• Alan is a member of the Bar Association of the
  District of Columbia, the A.I.P.P.I., F.I.C.P.I.,
  ABA and the A.I.P.L.A, where he is
  President-elect and a member of the Board of
  Directors, and previously served as chair of the
  International and Foreign Law Committee, PCT
  Issues Committee and the IP Practice in Japan
  Committee. He has lectured internationally on
  U.S. patent, export and contract matters as well
  as Japanese Patent practice, and has authored
  numerous articles published in the U.S. and
  Japan.