Monday, August 21, 2006

IPR Case Study

Electric company battle

Guangzhou Intermediate People's Court has made the decision of Property Preservation and Evidence Preservation in a patent infringement case between two electric companies. As a result, defendant Leviton Electric (Dongguan) Co Ltd has been prohibited from selling 50,000 products.

In June, General Protecht Group Inc, a manufacturer of Ground Fault Circuit Interrupters (GFCI), filed a lawsuit against Dongguan Leviton, a subsidiary of the US electric company Leviton. They said the defendant infringed on the design patent of its products.

The lawsuit came after Leviton's lawsuit in the US.

In April 2004, Leviton, a major US manufacturer of GFCI, filed several patent infringement lawsuits against General Protecht's clients in the US, claiming its GFCI products violated its patent rights.

The Zhejiang-based company has always paid great attention to its patents, says the company president Chen Wusheng, adding that now it has obtained three patents in the US and 22 patents in China.

Used in US households, GFCI is an electrical device that prevents people from severe or fatal electric shocks. Unlike the other four major US manufacturers' conventional mechanical and electrical technologies, General Protecht developed the technology by itself and has achieved success in the overseas market, says Chen.

Chen says Leviton intends to wear General Protecht down with high litigation costs. Although the lawsuit has affected its business, he will lead the company to fight Leviton to the end, he says.

In early June, his company received an order from a US court that accepted the claims of General Protecht that its products were beyond the scope of Leviton's patent.

Cross-border infringement

The Jiangxi Public Security Department has solved a case of cross-province copyright infringement, which consists of printing, transportation and sale.

Eight suspects were caught by the police, five of them were arrested, one was detained and two are awaiting trial.

This is the largest copyright infringement investigation by the Jiangxi police in recent years.

The gang bought the pirated books from illegal booksellers in Beijing, transported the books to Jiangxi by illegal booksellers in Nanchang, and sold the books in all cities and counties across Jiangxi Province.

Since the beginning of 2004 to May 2005, this gang sold about 3.2 million books, with turnover of more than 2.68 million yuan (US$3.3 million). About 88 illegal booksellers in Beijing were involved in the case, and the interests of nearly 200 publishing houses were infringed.

The case is still in process.

Source from China Daily 21-Aug-2006

Monday, July 24, 2006

Using Patent Information for the Benefit of Your SME

What is “Patent Information”?

“Patent information” is the technical and legal information contained in patent documents that are published periodically by patent offices. A patent document includes the full description of how a patented invention works and the claims which determine the scope of protection as well as details on who patented the invention, when it was patented and reference to relevant literature. About two-thirds of the technical information revealed in patents is never published elsewhere and the entire set of patent documents worldwide includes approximately 40 million items. This makes patent information the single most comprehensive collection of classified technological data.

Source from World Intellectual Property Organization

Tuesday, July 11, 2006

Managing the Intellectual Property Assets of Your SME

Managing an enterprise’s IP assets is more than just acquiring the formal IP rights through the national IP office. Patent or trademark rights are not worth much unless they are adequately exploited. Moreover, part of a company’s valuable IP may not require formal registration but may call for other measures of protection (e.g. confidentiality agreements). Enterprises willing to extract full value from their know-how and creativity should take adequate steps to develop an IP strategy for their business and seek to integrate it within their overall business strategy. This implies including IP considerations when drafting business plans and marketing strategies. A basic IP strategy would include at least the following:

A Policy on IP Acquisition

A single product or service may be protected by various forms of IP rights covering different aspects of that product or service. SMEs must consider the best protection package and make sure that all the formal rights are acquired as early as possible. SMEs should also bear in mind that creating a comprehensive IP portfolio may be a considerable investment. This is particularly the case for patents. SMEs must therefore carefully assess the costs and benefits of patenting on a case by case basis and develop a strategy/policy on patent acquisitions which is appropriate given their budget and market opportunities.

A Policy on IP Exploitation

IP assets may be exploited in a variety of ways. These may include the commercialization of IP-protected products and services; the entering into licensing or franchising agreements; the sale of IP assets to other firms; the creation of joint ventures; the use of IP to obtain access to other companies’ technology through cross-licensing agreements; or the use of IP to obtain business finance. Enterprises should decide in each case how they may best exploit their IP assets both domestically and internationally.

A Policy on IP Monitoring

Consulting patent and trademark databases regularly is important in order to find out about recent technical developments and new technologies, identify new licensing partners or suppliers, new market opportunities, monitor activities of competitors, identify possible infringers, and avoid infringing competitors’ rights.

A Policy on IP Enforcement

A clear policy on IP enforcement is crucial due to the losses that may be incurred by the existence of counterfeited goods in the market and the high costs involved in some IP disputes.

A description of how different companies with different levels of technological capacity may develop an IP strategy to suit their own needs is contained in a WIPO paper on “The Management of Intellectual Property Rights by Small and Medium Sized Enterprises”
Source from World Intellectual Property Organization