Perspectives bull Analysis bull Visionary Ideas

INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS

wwwdlapipercomip_global | Issue 16 Q4 2012

COLOMBIA GATEWAY TO SOUTH AMERICArsquoS PATENT PROSECUTION HIGHWAY

TRADEMARK OR CERTIFICATION MARK THE STANDARDS BODYrsquoS DILEMMA

COMBAT AGAINST COUNTERFEITING IN THE UAE

Att

orne

y A

dver

tisin

g

DIVIDED COURT REVIVES DIVIDED INFRINGEMENT

UNITED STATES

As I reflect on the past year as Editor of the IPT News I am struck by two things First it is clear that IP issues and concerns are globalizing at a rapid pace A common thread throughout our recent publications has been the impact international issues are having on our practice in the United States Whether it be the growth of Chinarsquos patent system privacy laws in Peru or patent reform in Australia the IPT News has explored numerous international topics of interest to our readers

Second I think we all would be hard pressed to find another profession where the rules can change so abruptly dramatically and frequently Itrsquos not just that we find our IP practices focusing on cutting-edge rapidly evolving subject matter Frequent startling changes in both statutes and case law make our practices extremely interesting and challenging For example just looking back at this year we have examined important legal developments including broad-based patent reform in the US new FDA regulations for data systems and the validity of gene patents When we pause and take stock the volume of new developments and the impact they have on our practices is quite remarkable

In this issue of the IPT News we continue exploring new trends First Stan Panikowski reviews the Federal Circuitrsquos restoration of divided patent infringement claims ndash only five years after the Circuit had effectively extinguished them Second Tiffany Nichols Eduardo Blanco and Pamela Bechtel analyze Colombiarsquos agreement with the USPTO to participate in the Patent Prosecution Highway Heather Dunn and Blake Jackson investigate trademark issues relating to standards bodies Finally Katie Withers writes from the United Arab Emirates about ways to combat counterfeiting

We hope you enjoy this issue of IPT News I also am pleased to introduce Darius Gambino from our Philadelphia office as our next IPT News Editor Darius practices patent prosecution counseling and litigation and Irsquom sure he will bring an interesting perspective to future issues Good luck Darius and to all our readers happy holidays

johnguaragnadlapipercom

EDITORrsquoS COLUMN

John M GuaragnaPartner Patent Litigation

The award-winning Intellectual Property and Technology News is now published in the United States Asia Pacific and EMEA regions Find all current and past editions of the IPT News here wwwdlapipercomipt_news

In support of our Global Sustainability Initiative this publication is printed on 100 recycled paper Please recycle this newsletter or share it with others

You are receiving this communication because you are a valued client former client or friend of DLA Piper The information contained in this newsletter is for informational purposes only and should not be construed as legal advice on any matter To unsubscribe from this mailing list send an email to communicationsdlapipercom or send your written request to DLA Piper Attention Marketing Department 401 B Street Suite 1700 San Diego California 92101-4297 USA Copyright copy 2012 DLA Piper llp (us) DLA Piper uk llp and other affiliated entities For questions comments and suggestions email us at IPTnewsdlapipercom or contact Diane Vislisel Senior Marketing Manager T +1 619 699 3541 dianevisliseldlapipercom US Chair ndash Intellectual Property and Technology John Allcock T +1 619 699 2828 johnallcockdlapipercom Editor in Chief John M Guaragna T +1 512 457 7125 johnguaragnadlapipercomDirector Intellectual Property and Technology Licia E Vaughn T +1 619 699 2997 liciavaughndlapipercomDLA Piper llp (us) 401 B Street Suite 1700 San Diego California 92101-4297 USA

PATENT LITIGATION PARTNER BRUCE KUYPER JOINS DLA PIPER IN LOS ANGELES

DLA Piperrsquos Patent Litigation practice expands further with the recent hire of Bruce Kuyper in Los Angeles Bruce has extensive experience in high-tech patent litigation involving complex computer-related technologies as well as electronics semiconductors satellite medical device and Internet technologies He has led the trial and appeal of cases before federal district courts the International Trade Commission (ITC) and the Court of Appeals for the Federal Circuit

Bruce also provides strategic counseling and guidance in the protection of inventions trademarks copyrights and trade secrets and has experience in drafting portions of SEC filings and conducting acquisition diligence relating to intellectual property

Learn more about Bruce at dlapipercombruce_kuyper

wwwdlapipercomip_global | 03

In an era when many writers are bemoaning the demise of the civil jury trial patent trials are on the rise Why is that

One reason is of course that patents are important to our overall economy But that does not entirely explain the rise of patent trials I believe there are a few other interrelated reasons

There is the combination of the absence of interlocutory appeals of trial court claim construction with de novo review plus the resultant frequent reversals of those decisions by the Federal Circuit These factors mixed with the significant economics associated with most patent cases mean that a trial is the ticket to appellate review of a key pretrial court decision And because reversal of that decision can influence the outcome parties will often go to trial to get the decision reviewed The end result is more trials in the patent area than in other areas of civil trial practice

We certainly have seen the impact of this ecosystem firsthand at DLA Piper We have been privileged to represent our clients in many trials this year in venues ranging from the ITC to courts across the US In fact by the end of this year we will have had about one patent trial a month We like to think that this is an area of great strength for our firm and we look forward to continuing to serve you when you need this experience

Have a wonderful holiday

johnallcockdlapipercom

Trials Trials Trials

John AllcockPartner Global Co-Chair and US Chair Intellectual Property and Technology

DLA Piper helped kick off ldquoStartUp Law 101rdquo ndash a series of six presentations at Caltech Entrepreneurship Club held at Caltech University this semester Patent Litigation partner Olga Berson led with ldquoProtecting your companyrsquos IP in joint research arrangementsrdquo a lecture that was well received by students professors and Caltech technology transfer personnel

Vinny Sanchez US Chair of DLA Piperrsquos Technology Sourcing and Commercial practice then talked about ldquoCommercialization of IP ndash generating revenue from an ideardquo His presentation which received rave reviews covered

n partnering and distribution arrangements for IP commercialization

n essential building blocks to commercialize an idea

n moving from ldquoconceptrdquo to ldquorevenuerdquo ndash preparing for showtime without compromising the idea

The next presentation in the series was given by Corporate partner Larry Nishnick on ldquoCorporate and finance issues facing startupsrdquo Upcoming programs by DLA Piper lawyers include ldquoEmployment law for startupsrdquo (Maria Rodriguez) and ldquoStartup tax issuesrdquo (Steve Weerts) For more information visit this page httpcaltecheclubtumblrcom

Olga Berson (Los Angeles) speaks to students and professors at Caltech

DLA PIPER PRESENTS ldquoSTARTUP LAW 101rdquo AT CALTECH UNIVERSITY

Colombia has reached an agreement with the USPTO to participate in the Patent Prosecution Highway becoming the first South American country to gain such status With Colombiarsquos sturdy economy and confident move into the global marketplace this agreement could not come at a better time Understanding the need for more robust patent laws the Colombian government is aggressively reshaping its IP system

The authors had the opportunity to meet with Jose Luis Londontildeo Fernaacutendez Superintendent of Industrial Property (Colombiarsquos equivalent to the USPTO) He was enthusiastic about the Colombian patent system and the Patent Prosecution Highway and is eagerly seeking to educate Colombians and the global public about the mechanisms available for protecting their ideas and innovations

Mr Londontildeo believes so strongly in patent protection that he is in the process of separating the patent office from the trademark and copyright office to allow the patent department to rapidly expand Mr Londontildeorsquos staff provided us with statistics indicating that United States companies rank first among those seeking protection in Colombia followed by Germany and Colombia then Switzerland in fourth place

OVERVIEW OF COLOMBIArsquoS PATENT SYSTEM

Colombia patent law was implemented under the Andean Community Decision 486 of 2000 incorporating the Agreement on Trade-Related Aspects of Intellectual Property Rights the Patent Cooperation Treaty the Paris Convention on Industrial Property and the UPOV Convention Since these laws and treaties were enacted Colombia has shrunk patent examination times from 54 months to 48 months and is aiming for further reductions

TYPES OF PATENTS

Colombia patent law offers two major types of protection ndash the invention patent (patente de invencioacuten similar to US utility patents) and the utility model patent (patente de modelo de utilidad similar to US design patents) All rights are granted to the inventor There is no protection for new uses of previously known items Also non-patentable are scientific theories or mathematical methods living things found in nature aesthetic creations rules and methods for pursuit of intellectual economic or business activities computer programs and software methods for presenting information and diagnostic therapeutic and surgical methods for treatment of humans or animals

FORMAL REQUIREMENTS

All applications must be filed in Spanish with the Patent Office (Divisioacuten de Nuevas Creaciones) of the Superintendent of Industry and Commerce (SIC) The date of receipt by the Patent Office constitutes the filing date Complete applications are published 18 months after filing in the Gaceta de Propriedad Industrial An opposition may be filed by anyone within 60 days of publication The applicant may reply to this opposition

PATENTABILITY AND EXAMINATION STANDARDS

All inventions must be new involve an inventive step and be industrially applicable A new invention is one not previously made available to the public by written or oral description An invention is inventive when it is neither obvious nor obviously derived from the state of the art

The application is examined by an examiner who is a licensed attorney Typically examiners handle about 20 applications at a

COLOMBIA

SOUTH AMERICArsquoS

PATENT PROSECUTION HIGHWAY

GATEWAY TO

ANN FORD NAMED VICE CHAIR US IPT PRACTICE

Ann Ford has been named Vice Chair of DLA Piperrsquos US Intellectual Property and Technology practice An IPT partner in our Washington DC office Ann is the US Chair of our Trademark Copyright and Media group leading nearly 30 lawyers in one of the most active and widely respected practices of its kind in the nation

Ann represents many well-known global brands and has built long-standing relationships with clients in a broad array of industries She is a member of the firmrsquos Executive Committee Policy Committee and Partner Elevation Committee Previously she served as co-managing partner of our Washington DC office

Ann has been widely recognized for her practice Most notably she is listed in Chambers USA Americarsquos Leading Lawyers for Business 2012 and was named the 2013 Lawyer of the Year for Trademark Law in Washington DC by Best Lawyers Ann ranks nationally among the top 20 trademark lawyers by volume of filings with the USPTO (Corporation Service Company 2011)

According to recent interviews by Chambers and Legal500 researchers clients appreciate Annrsquos intelligence business judgment and great sense of humor We wholeheartedly agree

Learn more about Ann at dlapipercomann_ford

wwwdlapipercomip_global | 05

time Examiners only search public databases like the USPTO and Escape databases for potential prior art and may consult with experts or request additional documentation from the applicant If such a request is made the applicant has 60 days from notification to provide the required documentation otherwise the application will be abandoned Final decisions of patentability are made within 48 months from filing If a patent application is granted the patent will be in force within five working days

If some or all of the applicationrsquos claims are rejected and the applicant disagrees the applicant has five working days to file a Motion for Reconsideration (Recurso de Reposicioacuten) These requests are reviewed by the Superintendent of SIC and the decision is final

PROTECTION AND ENFORCEMENT

An invention patent confers protection for 20 years a utility design is protected for 10 years The scope of protection is defined by the claims This time period is not extendable and continuations are not available As in the US a strong presumption of validity exists

Infringement in Colombia happens when one unlawfully makes offers for sale uses imports or carries out the acts of a patented invention or process Patents are enforced by filing an infringement action to seek injunctive relief andor damages with the Colombian Circuit Court or the criminal system In civil actions a

plaintiff may request a preliminary injunction that is in place for the duration of the litigation The request must be supported by a showing of infringement Damages include lost profits and actual damages unjust enrichment and reasonable royalty

In Colombia a patent infringer may also be subject to criminal penalties among them a three- to eight-year jail sentence and fines This remedy almost unique to Colombia can be quite an effective tool against counterfeiters

CLOSING OBSERVATIONS

Colombiarsquos economy is quickly growing and globalizing As a member of the WTO and a member state of the PCT it will become even more active in the worldrsquos IP market Companies such as Chevron Sumitomo Abbott and Bayer have already sought patent protection in Colombia Applications are quickly examined and infringement can involve both civil and criminal actions Thus Colombia is a potentially valuable venue when seeking patent protection

Tiffany Nichols based in Silicon Valley focuses on IP litigation and prosecution You may reach her at tiffanynicholsdlapipercom

Eduardo Blanco based in Silicon Valley is developing his patent litigation practice You may reach him at eduardoblancodlapipercom

Based in San Diego Pamela Bechtel focuses on patent prosecution in biological sciences pharmaceuticals and medical devices Reach her at pamelabechteldlapipercom

AUDITING COLOMBIArsquoS AGRICULTURE IP

With the goal of conducting an IP audit of Colombiarsquos agriculture-related IP three DLA Piper lawyers under the guidance of partner Lisa Haile and International Pro Bono Counsel Kristen Abrams recently visited Bogotaacute

Pamela Bechtel Tiffany Nichols and Eduardo Blanco accompanied by R Mark Davis of Public Interest Intellectual Property Advisors (PIIPA) also sought to identify Colombian agricultural innovations which are not being protected by patents and may have export value

While in Colombia the team met with the Superintendent of the Patent Office and the Director of Instituto Colombiano Agropecuario which regulates Colombiarsquos Plant Registry as well as with government-funded researchers and university researchers

Their research was part of a project being carried out by New Perimeter DLA Piperrsquos nonprofit affiliate dedicated to global pro bono work in partnership with PIIPA The projectrsquos aim is not only to help identify agricultural innovations in Colombia but also to stimulate use of Colombiarsquos patent system The project is currently in its second and final stage and includes interviewing researchers and government officials in Medelliacuten Cali and Cartagena

Ultimately the project will release a report outlining the results of the patent audit to be presented at a conference of CIAT the International Center for Tropical Agriculture a nonprofit dedicated to reducing poverty and hunger while protecting natural resources in developing countries

PRO

BON

O

L to R Eduardo Blanco DLA Piper (Silicon Valley) Tiffany Nichols DLA Piper (Silicon Valley) Pamela Bechtel DLA Piper (San Diego) R Mark Davis President PIIPA Maria Virginia Jaramillo Navarro IP Manager CIAT Jose Luis Lodontildeo Fernaacutendez Superintendente Delegado para la Propiedad Industrial de Colombia

SOUTH AMERICArsquoS

PATENT PROSECUTION HIGHWAY

By Tiffany Nichols Eduardo Blanco and Pamela Bechtel

A recent Federal Circuit decision restores a type of patent infringement claim that it had extinguished five years earlier The issue is can a defendant be liable for infringement of a

method claim when no single actor commits all the acts that constitute direct infringement In its 2007 BMC decision the Federal Circuitrsquos answer to this question was a qualified

ldquonordquo1 The Federal Circuit held that unless the defendant controls or directs the actions of the parties who collectively perform the claimed method there can be no liability for infringement Truly ldquodividedrdquo infringement of method claims became unviable and

defendants could often obtain early dismissal

By Stanley J Panikowski

DIVIDEDCOURT REVIVES

DIVIDEDINFRINGEMENT

wwwdlapipercomip_global | 07

But in the Akamai and McKesson cases decided in August 2012 the Federal Circuit (sitting en banc with all eleven active judges) changed its answer to a qualified ldquoyesrdquo2 The Federal Circuit held that a defendant may be liable for induced infringement where multiple parties collectively perform all steps of a claimed method even though no single party performs all of the steps itself Overruling its earlier BMC decision the court held it was not necessary to show that one party controlled or directed the actions of any other party to prove this type of claim A plaintiff however must also prove the other elements of induced infringement (including knowledge of the patent) before it can ultimately prevail on a divided infringement claim

While changing the law for induced infringement of these claims the Federal Circuit declined to determine whether a defendant may be liable for direct infringement in these circumstances The court therefore revived divided (or ldquojointrdquo) infringement claims for inducement claims but left the BMC rule intact for direct infringement claims And the court did so by the thinnest of margins six judges were in the majority and five dissented

The issue of divided infringement typically arises in either of two scenarios The first is when the plaintiff alleges the defendant has performed some steps of a claimed method itself and one or more third parties perform the remaining steps The second is when the plaintiff alleges the defendant has induced multiple third parties collectively to perform all the steps of a claimed method but no single party has performed all of the steps itself In Akamai and McKesson the Federal Circuit held that both types of allegations can support an induced infringement claim under 35 USC sect 271(b)

In the first scenario the alleged inducer contributes one or more of the acts that constitute performance of the method A plaintiff must then prove the alleged inducer knowingly induced some third party or parties to perform the remaining steps of the method and specifically intended to encourage infringement This requires proof that the alleged inducer knew of the patent and knew that the accused acts constituted patent infringement Likewise in the second scenario a plaintiff must prove that the alleged inducer knowingly induced multiple third parties collectively to perform all of the methodrsquos steps and specifically intended to encourage infringement The Federal Circuit did not modify the standards relating to the state of mind required for inducement Rather the only change was revoking the general requirement that a single actor perform all steps of the claimed method

The Federal Circuitrsquos decision is simultaneously narrow and sweeping It is narrow in the sense that it affects only inducement claims for patented methods that are not performed by a single actor If a plaintiff proves that a single actor performs all steps of the method to supply the direct infringement needed for an infringement claim then divided infringement is not an issue If a plaintiff alleges infringement of a system or apparatus claim then divided infringement is not an issue because the party that installs the final part is the potential direct infringer And the Federal Circuit did not change the BMC rule for claims of direct infringement of method claims under 35 USC sect 271(a) For direct infringement under sect 271(a) a plaintiff still must prove either that a single entity performed all steps of the claimed method or that the accused infringer directed or controlled performance of all the claimed steps3

Yet the Federal Circuitrsquos decision is sweeping in the sense that it revives an entire category of infringement claims that the Federal Circuit had extinguished in BMC Absent proof of control or direction a patentee could not successfully assert a method claim where ndash whether because of the way the claim was drafted or because of the way the method is carried out in practice ndash it could not identify a single direct infringer From a defendantrsquos perspective after BMC such claims posed little or no threat AkamaiMcKesson has reinvigorated these claims Of course a plaintiff still must prove collective performance of the entire method and the specific intent element of induced infringement The strength of individual claims therefore will depend on the particular facts But the Federal Circuit has now removed from defendantsrsquo arsenals a legal argument that had proven very useful

Stan Panikowski a partner in DLA Piperrsquos Patent Litigation group is experienced in IP antitrust appeals and other areas of business litigation Reach him at stanleypanikowskidlapipercom

1 BMC Resources Inc v Paymentech LP 498 F3d 1373 (Fed Cir 2007)

2 Akamai Technologies Inc v Limelight Networks Inc Federal Circuit Appeal Nos 2009-1372 -1380 -1416 -1417 and McKesson Technologies Inc v Epic Systems Corp Federal Circuit Appeal No 2010-1291 (both decided on August 31 2012 in a single published opinion) at 692 F3d 1301 (Fed Cir 2012) (en banc)

3 The Federal Circuit noted that much of the briefing in Akamai and McKesson centered on the question of direct infringement claims The court chose only to address induced infringement This leaves intact the BMC rule on direct infringement but does not foreclose the Federal Circuit from revisiting divided infringement under sect 271(a) in the future

wwwdlapipercomip_global | 07

But in the Akamai and McKesson cases decided in August 2012 the Federal Circuit (sitting en banc with all eleven active judges) changed its answer to a qualified ldquoyesrdquo2 The Federal Circuit held that a defendant may be liable for induced infringement where multiple parties collectively perform all steps of a claimed method even though no single party performs all of the steps itself Overruling its earlier BMC decision the court held it was not necessary to show that one party controlled or directed the actions of any other party to prove this type of claim A plaintiff however must also prove the other elements of induced infringement (including knowledge of the patent) before it can ultimately prevail on a divided infringement claim

While changing the law for induced infringement of these claims the Federal Circuit declined to determine whether a defendant may be liable for direct infringement in these circumstances The court therefore revived divided (or ldquojointrdquo) infringement claims for inducement claims but left the BMC rule intact for direct infringement claims And the court did so by the thinnest of margins six judges were in the majority and five dissented

The issue of divided infringement typically arises in either of two scenarios The first is when the plaintiff alleges the defendant has performed some steps of a claimed method itself and one or more third parties perform the remaining steps The second is when the plaintiff alleges the defendant has induced multiple third parties collectively to perform all the steps of a claimed method but no single party has performed all of the steps itself In Akamai and McKesson the Federal Circuit held that both types of allegations can support an induced infringement claim under 35 USC sect 271(b)

In the first scenario the alleged inducer contributes one or more of the acts that constitute performance of the method A plaintiff must then prove the alleged inducer knowingly induced some third party or parties to perform the remaining steps of the method and specifically intended to encourage infringement This requires proof that the alleged inducer knew of the patent and knew that the accused acts constituted patent infringement Likewise in the second scenario a plaintiff must prove that the alleged inducer knowingly induced multiple third parties collectively to perform all of the methodrsquos steps and specifically intended to encourage infringement The Federal Circuit did not modify the standards relating to the state of mind required for inducement Rather the only change was revoking the general requirement that a single actor perform all steps of the claimed method

The Federal Circuitrsquos decision is simultaneously narrow and sweeping It is narrow in the sense that it affects only inducement claims for patented methods that are not performed by a single actor If a plaintiff proves that a single actor performs all steps of the method to supply the direct infringement needed for an infringement claim then divided infringement is not an issue If a plaintiff alleges infringement of a system or apparatus claim then divided infringement is not an issue because the party that installs the final part is the potential direct infringer And the Federal Circuit did not change the BMC rule for claims of direct infringement of method claims under 35 USC sect 271(a) For direct infringement under sect 271(a) a plaintiff still must prove either that a single entity performed all steps of the claimed method or that the accused infringer directed or controlled performance of all the claimed steps3

Yet the Federal Circuitrsquos decision is sweeping in the sense that it revives an entire category of infringement claims that the Federal Circuit had extinguished in BMC Absent proof of control or direction a patentee could not successfully assert a method claim where ndash whether because of the way the claim was drafted or because of the way the method is carried out in practice ndash it could not identify a single direct infringer From a defendantrsquos perspective after BMC such claims posed little or no threat AkamaiMcKesson has reinvigorated these claims Of course a plaintiff still must prove collective performance of the entire method and the specific intent element of induced infringement The strength of individual claims therefore will depend on the particular facts But the Federal Circuit has now removed from defendantsrsquo arsenals a legal argument that had proven very useful

Stan Panikowski a partner in DLA Piperrsquos Patent Litigation group is experienced in IP antitrust appeals and other areas of business litigation Reach him at stanleypanikowskidlapipercom

1 BMC Resources Inc v Paymentech LP 498 F3d 1373 (Fed Cir 2007)

2 Akamai Technologies Inc v Limelight Networks Inc Federal Circuit Appeal Nos 2009-1372 -1380 -1416 -1417 and McKesson Technologies Inc v Epic Systems Corp Federal Circuit Appeal No 2010-1291 (both decided on August 31 2012 in a single published opinion) at 692 F3d 1301 (Fed Cir 2012) (en banc)

3 The Federal Circuit noted that much of the briefing in Akamai and McKesson centered on the question of direct infringement claims The court chose only to address induced infringement This leaves intact the BMC rule on direct infringement but does not foreclose the Federal Circuit from revisiting divided infringement under sect 271(a) in the future

By Heather A Dunn and Blake W Jackson

TRADEMARK OR CERTIFICATION MARK THE STANDARDS BODYrsquoS DILEMMA

DLA PIPER HELPS ZORAN PREVAIL AT THE ITC

DLA Piper has been extremely active in the

ITC with 11 cases handled thus far in 2012

alone resulting in successful outcomes for an

impressive list of clients

In one such case we represented Zoran

Corporation (now CSR) in defending

against a claim of patent infringement by

Freescale Semiconductor After a three-

day trial and substantial post-trial briefing

the Administrative Law Judge (ALJ) issued

his Initial Determination of no violation by

Zoran The ALJ further found the asserted

patent claims invalid that certain claims were

barred by the doctrine of issue preclusion

that Freescale failed to prove it has a

domestic industry and that Freescale failed

to prove infringement against other accused

Zoran products

The Commission

subsequently affirmed

the finding of no

violation on each of

these grounds Mark FowlerUS Co-Chair Patent Litigation Partner Silicon Valley

Michael G SchwartzPartner Silicon Valley

Timothy LohsePartner Silicon Valley

Summer Krause Associate Silicon Valley

John GuaragnaPartner Austin

Katherine Riley Grasso Partner Washington DC

Erik R Fuehrer Associate Silicon Valley

Past results are not a guarantee of future success

IN

THE IT

C

When standards bodies look to protect the marks associated with their standards they are faced with a dilemma should they use trademarks or certification marks One may think the answer is obvious ldquocertificationrdquo seems to be what standards bodies do and therefore a standards body should always use certification marks But the obvious answer is not always the right one Some standards bodies find that trademarks better fit their needs

A standards body develops criteria for products or services provided by others Standards bodies also devise instructional materials such as booklets programming interfaces or other software If the standard is met then the standards body licenses a mark to the product or service provider to indicate compliance The question faced by a standards body is what kind of mark it should establish and license to others

Most people are familiar with trademarks in their typical role to indicate the source of goods and services People know that JetBlue online reservations are provided by JetBlue Airlines and that a can of Coca-Cola comes from The Coca-Cola Company In contrast a certification mark such as the EnergyStar logo on appliances indicates a product or service meets an established standard Trademarks however can also be used to indicate qualities of a product or service ndash for example the Oprahrsquos Book Club logo suggests Oprah Winfrey approves a book the Council of Better Business Bureaus BBB logo shows a company follows set business practice standards Why do two regimes exist for what seems to be a similar function

TWO REGIMES

The trademark and certification mark regimes are different The USPTO defines a trademark as identifying ldquothe source of the goods of one partyrdquo and a certification mark as a mark ldquoowned by one party who certifies the goods and services of others when they meet certain standardsrdquo Importantly the USPTO stresses that the ldquoowner of the [certification] mark exercises control over the use of the mark howeverhellipuse of the mark is by othersrdquo1 Based on these

definitions standards bodiesrsquo first choice may be certification marks particularly if the standards body does not provide any goods or services A number of standards bodies have chosen this regime But others have chosen trademarks to protect the goods and services they provide

PROS AND CONS OF TRADEMARKS

One advantage of trademarks is the complete control the owner can exercise over its trademarks Owners can license a trademark to whomever they wish And although trademarks are subject to certain forms of attack they cannot be attacked for discriminating against particular licensees This results in broad and complete control over a markrsquos use Another advantage is that trademarks are far more common than certification marks and are thus more familiar The trademark application process includes fewer requirements than the certification mark process Additionally trademarks are recognized in nearly all countries around the world while certification marks are not

Possible drawbacks do exist the licensor may appear more involved in the commercial aspects of licensing and can appear less of an altruistic administrator of the standard Also a trademark must be used in connection with and identify some type of goods or services Thus there may be instances when a trademark is not a feasible option

PROS AND CONS OF CERTIFICATION MARKS

Certification marks afford the appearance of detached altruism A certification mark licensor cannot attach the mark to its own manufactured goods Thus it is perceived as operating above the fray of commercial self-promotion

However obtaining a certification mark is more arduous Applicants must submit the details of the certification standard to the USPTO2 Some standards such as those for software may be quite complex and may periodically change Certification mark owners are also vulnerable to injured third parties who can attempt to cancel the

mark on specific stringent grounds3 such as failure of the owner to license the mark to a person who maintains the standards or conditions the mark certifies The owner of a certification mark is not free to decide whether and to whom to license use of a certification mark Also because certification marks are not globally recognized (with some countries recognizing them but not others) owners may face obstacles trying to protect a certification mark in some countries outside of the United States

MAKING THE CHOICE

The choice of regime for standards organizations becomes a question of practical realities as well as organizational goals The certification mark regime may be preferred if the owner organization places great importance on being perceived as an independent unbiased standards-setter The trademark regime may be preferred if an organization desires ease of administration and greater flexibility and control over use of its mark and will use the mark itself in connection with a product or service it offers to third parties To identify the best regime assess your activities materials services and market and consider how you and your constituents will use the mark

When it comes time for your standards body to choose a regime to protect its marks the call should be carefully considered and it may be a close one

Heather A Dunn is a partner in DLA Piperrsquos San Francisco and Silicon Valley who concentrates on trademark copyright and media law Reach her at heatherdunndlapipercom

Blake W Jackson is an associate based in Silicon Valley focusing on managing intellectual property as a business asset You may reach him at blakejacksondlapipercom

1 httpwwwusptogovfaqtrademarksjsp_Toc275426676 (February 29 2012) See also 15 USC sect 1127 A certification mark is not used by its owner and does not indicate the source of goods See TMEP sect130609(a)

2 See TMEP sect130606(f )(i) and (ii)

3 See 15 USC sect1064 and TMEP sect130607

TRADEMARK OR CERTIFICATION MARK THE STANDARDS BODYrsquoS DILEMMA

wwwdlapipercomip_global | 09

When standards bodies look to protect the marks associated with their standards they are faced with a dilemma should they use trademarks or certification marks One may think the answer is obvious ldquocertificationrdquo seems to be what standards bodies do and therefore a standards body should always use certification marks But the obvious answer is not always the right one Some standards bodies find that trademarks better fit their needs

A standards body develops criteria for products or services provided by others Standards bodies also devise instructional materials such as booklets programming interfaces or other software If the standard is met then the standards body licenses a mark to the product or service provider to indicate compliance The question faced by a standards body is what kind of mark it should establish and license to others

Most people are familiar with trademarks in their typical role to indicate the source of goods and services People know that JetBlue online reservations are provided by JetBlue Airlines and that a can of Coca-Cola comes from The Coca-Cola Company In contrast a certification mark such as the EnergyStar logo on appliances indicates a product or service meets an established standard Trademarks however can also be used to indicate qualities of a product or service ndash for example the Oprahrsquos Book Club logo suggests Oprah Winfrey approves a book the Council of Better Business Bureaus BBB logo shows a company follows set business practice standards Why do two regimes exist for what seems to be a similar function

TWO REGIMES

The trademark and certification mark regimes are different The USPTO defines a trademark as identifying ldquothe source of the goods of one partyrdquo and a certification mark as a mark ldquoowned by one party who certifies the goods and services of others when they meet certain standardsrdquo Importantly the USPTO stresses that the ldquoowner of the [certification] mark exercises control over the use of the mark howeverhellipuse of the mark is by othersrdquo1 Based on these

definitions standards bodiesrsquo first choice may be certification marks particularly if the standards body does not provide any goods or services A number of standards bodies have chosen this regime But others have chosen trademarks to protect the goods and services they provide

PROS AND CONS OF TRADEMARKS

One advantage of trademarks is the complete control the owner can exercise over its trademarks Owners can license a trademark to whomever they wish And although trademarks are subject to certain forms of attack they cannot be attacked for discriminating against particular licensees This results in broad and complete control over a markrsquos use Another advantage is that trademarks are far more common than certification marks and are thus more familiar The trademark application process includes fewer requirements than the certification mark process Additionally trademarks are recognized in nearly all countries around the world while certification marks are not

Possible drawbacks do exist the licensor may appear more involved in the commercial aspects of licensing and can appear less of an altruistic administrator of the standard Also a trademark must be used in connection with and identify some type of goods or services Thus there may be instances when a trademark is not a feasible option

PROS AND CONS OF CERTIFICATION MARKS

Certification marks afford the appearance of detached altruism A certification mark licensor cannot attach the mark to its own manufactured goods Thus it is perceived as operating above the fray of commercial self-promotion

However obtaining a certification mark is more arduous Applicants must submit the details of the certification standard to the USPTO2 Some standards such as those for software may be quite complex and may periodically change Certification mark owners are also vulnerable to injured third parties who can attempt to cancel the

mark on specific stringent grounds3 such as failure of the owner to license the mark to a person who maintains the standards or conditions the mark certifies The owner of a certification mark is not free to decide whether and to whom to license use of a certification mark Also because certification marks are not globally recognized (with some countries recognizing them but not others) owners may face obstacles trying to protect a certification mark in some countries outside of the United States

MAKING THE CHOICE

The choice of regime for standards organizations becomes a question of practical realities as well as organizational goals The certification mark regime may be preferred if the owner organization places great importance on being perceived as an independent unbiased standards-setter The trademark regime may be preferred if an organization desires ease of administration and greater flexibility and control over use of its mark and will use the mark itself in connection with a product or service it offers to third parties To identify the best regime assess your activities materials services and market and consider how you and your constituents will use the mark

When it comes time for your standards body to choose a regime to protect its marks the call should be carefully considered and it may be a close one

Heather A Dunn is a partner in DLA Piperrsquos San Francisco and Silicon Valley who concentrates on trademark copyright and media law Reach her at heatherdunndlapipercom

Blake W Jackson is an associate based in Silicon Valley focusing on managing intellectual property as a business asset You may reach him at blakejacksondlapipercom

1 httpwwwusptogovfaqtrademarksjsp_Toc275426676 (February 29 2012) See also 15 USC sect 1127 A certification mark is not used by its owner and does not indicate the source of goods See TMEP sect130609(a)

2 See TMEP sect130606(f )(i) and (ii)

3 See 15 USC sect1064 and TMEP sect130607

TRADEMARK OR CERTIFICATION MARK THE STANDARDS BODYrsquoS DILEMMA

wwwdlapipercomip_global | 09

THE LEGAL LANDSCAPE

Addressing illicit trade requires first and foremost a legal framework adequate to protect IP rights The UAE is a signatory to the World Trade Organizationrsquos Agreement on Trade-Related Aspects of Intellectual Property Rights Consequently the UAErsquos federal Trademarks Law provides brand owners with the opportunity to register trademarks for specified goods and services and affords special protection to well-known marks It is essential that rights holders register their brands as UAE trademarks to strengthen their position when tackling importation or re-export of counterfeits

Another key requirement in tackling counterfeits is an effective enforcement regime UAE Customs officials are now empowered to exercise enforcement procedures at borders The GCC Unified Customs Law permits them to investigate any consignment to ensure it conforms with the declaration and to seize goods that infringe a UAE trademark Each of the seven emirates of which the UAE is comprised enforces its border measures somewhat differently For example Dubai Abu Dhabi and Sharjah have each established specialist IP rights divisions within their customs departments

Brand owners may also pursue a criminal complaint andor bring a civil action against counterfeiters In Dubai the police have established a special department to deal with trade in illicit goods and the threat of a criminal prosecution (and imprisonment of up to three years) may be a more effective deterrent than a fine A specialist division has also been tasked with tackling online infringers and the courts may order that a website be blocked from access by UAE Internet users until the court has made its decision on liability in a related infringement case

A civil action can also be brought against an infringer and a claim may be joined to a criminal complaint This enables rights holders to be officially represented in the criminal proceedings Further economic development departments in the various emirates who are responsible for consumer protection matters have a complaints systems in place to deal with shops suspected of selling fakes For example the Dubai Economic Development Department (DED) may impose fines and confiscate or destroy counterfeit goods

ON THE RIGHT TRACK

The UAE is taking significant steps to combat and deter counterfeit trade The growing number of successful raids suggests that these actions are bearing fruit for brand owners In August 2012 the DED seized counterfeit electronics worth DH4 million (US$11 million) including 5300 televisions and 7000 DVD players Earlier in 2012 about 150000 fake tools were confiscated from warehouses in Ajman and Ras Al Khaimah In 2011 Dubai Customs estimated the number of counterfeit goods it seized that year had dropped by approximately 30 percent ndash a period in which the number of brands registered with Dubai Customs increased from 182 to 400

Businesses concerned about counterfeiting in the UAE should ensure that their key brands are registered as trademarks here The appropriate enforcement method will depend on the target A significant enforcement action may be necessary to cut off a main supply or manufacturing source but smaller resellers may require more proportionate enforcement steps At the very least brand owners should ensure that consignments are monitored for counterfeit goods by recording details of their trademarks with the relevant UAE Customs authorities

COMBAT AGAINST COUNTERFEITING IN THE UAECounterfeiting is rife throughout the Middle East and the United Arab Emirates in particular has become one of the worldrsquos biggest transit hubs for illicit goods Brand protection groups have identified Dubairsquos free zones as a nerve center through which fake goods made in China are re-exported to Western markets About 10000 containers enter Dubairsquos ports every day so battling the supply of fakes is no easy task

By Katie Withers

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Katie Withers is a Senior Legal Consultant in DLA Piperrsquos IPT group based in Dubai You may reach her at katiewithersdlapipercom

This article originally appeared in the Q3 2012 issue of the IPT News (EMEA)

wwwdlapipercomip_global | 11

DLA Piperrsquos fourth annual Technology Leaders Forecast Survey asked hundreds of technology leaders for their insights into the major trends challenges and opportunities confronting the technology industry

The 2012 survey released in conjunction with the firmrsquos Global Technology Leaders Summit found that tech leaders are cautiously optimistic about the state of the industry and predict that in coming months it will show slow but steady growth

The leaders who were surveyed overwhelmingly expect both sales and hiring to grow moderately in 2013 Seventy-two percent said sales would increase at their organizations Fifty percent indicated their organizations are planning on moderate hiring increases over the next 12 months with 27 percent planning on flat staffing levels

ldquoAmid global economic headwinds business leaders say there is a lsquonew normalrsquo in which technology companies operate Tech leaders seem to have lowered their overall expectations for growth while still remaining confident in the fundamentals of their own businessesrdquo said Peter Astiz Global Co-Head of the Technology Sector at DLA Piper

The survey also uncovered leadersrsquo thoughts on the immediate challenges they face the areas in which they expect growth their uncertainties about the Chinese economy and their view that the model for building and investing in startups has permanently changed To read the full survey please visit wwwdlapipercomtech-leader-forecast-survey-q4-2012

DLA PIPER EXAMINES OUTLOOK FOR THE TECH INDUSTRY

Nearly 200 lawyers representing most of Silicon Valleyrsquos major companies attended DLA Piperrsquos sixth annual Women in IP Law CLE Luncheon at the Four Seasons in Silicon Valley

Showcasing women as leaders in the IP field the event held in late September promotes skills networking and mentoring among women in IP law and business The annual event open to both men and women has become a key event in Silicon Valley

Through the event DLA Piper aims to foster support among women in the IP field to show women as thought leaders and authorities in the field and to advance the role and number of women leaders in IP

The event was co-sponsored by the Association of Corporate Counsel and Leading Women in Technology and featured lively panel discussions with audience participation on new developments in both trade secret law and enforcement and patent monetization and enforcement

Panelists included Marta Beckwith Senior Director IP Litigation at Cisco Systems Inc Marjorie Goux Senior Corporate Counsel with The Clorox Company Diane Honda then-Vice President General Counsel and Secretary of Extreme Networks and currently Vice President General Counsel at Barracuda Networks and DLA Piper IPT partners Christine Corbett Victoria Lee (both Silicon Valley) and Denise Kraft (Wilmington Delaware)

Materials from the event are available at wwwdlapipercomfilesuploadWIP-Book2012pdf

Licia Vaughn is the Director of Intellectual Property and Technology at DLA Piper She practices IP litigation and functions as the practice group manager for the Intellectual Property and Technology practice in the United States Reach her at liciavaughndlapipercom

WOMEN IN IP LAW MANAGING YOUR IP IN A DYNAMIC ENVIRONMENT by Licia Vaughn

L to R Panelists Victoria Lee DLA Piper (Silicon Valley) Marjorie Goux Senior Corporate Counsel The Clorox Company Diane Honda Vice President General Counsel Barracuda Networks

L to R Panelists Christine Corbett DLA Piper (SIlicon Valley) Denise Kraft DLA Piper (Wilmington) Marta Beckwith Senior Director Legal Services Cisco Systems Inc

L to R Carla Rydholm Lex Machina Ingrid Kaldre Legal Data Analytics Francesca Svarcas California State University Adjunct Faculty

L to R Ann Lee Corporate Counsel The Clorox Company Monica Winghart Executive Vice President and General Counsel Article One Partners Carolyn McNiven DLA Piper (San Francisco)

TOP TEN IP LITIGATIONWhen you have an IP dispute that can only be solved in the

courtroom DLA Piper has the trial strength and technical depth to get you through The BTI Litigation Outlook 2013 report a survey of US corporate counsel recently ranked DLA Piper

among the top ten US firms for IP litigation When it matters to you it matters to us

wwwdlapipercom