IP Protection After U.S.-China Trade Deal: Patents, Trademarks, Copyrights, Trade Secrets
Navigating the Evolving Landscape for Piracy and Counterfeiting, Bad Faith Marks, Geographical Indications, and More

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Tuesday, March 17, 2020
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will provide guidance to IP counsel on the implications of the U.S.-China trade deal for IP protection. The panel will discuss the changes and their impact on IP. The panel will examine steps companies can take to prepare for the changes as they go into effect and how to leverage the changes.
Faculty

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Mr. Van Horn has a strong working knowledge of the specialized areas of patent reexamination, patent term extension, and procedures under the Patent Cooperation Treaty. After a 31-year career at the USPTO, he joined the firm and has served in a variety of leadership positions relating to patent policy and practice. While deputy solicitor, he argued cases in the federal courts. As deputy assistant commissioner, he established the policy and practice for examining patent applications.

Ms. Wu has significant experience in both United States and China trademark and copyright law. She advises clients and works closely with counsel around the world on trademark usage, clearance, prosecution, domestic and worldwide portfolio management, litigation, and enforcement matters. She also handles cancellation and opposition proceedings before the Trademark Trial and Appeal Board. She focuses on enforcing client rights against counterfeiters and manages anti-counterfeiting actions in China, crafting efficient solutions for each client. She also conducts searches on the Chinese trademark databases and manages Chinese trademark prosecution and enforcement matters for many publicly traded companies.

Ms. Yang focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases. She is involved in all phases of litigation, including pre-litigation analysis, fact discovery, and expert discovery. She also has experience in Section 337 litigation at the International Trade Commission and post-grant proceedings at the Patent Trials and Appeals Board, including inter partes reviews.
Description
On Jan. 15, 2020, the U.S. and China signed the phase one Economic and Trade Agreement. The Agreement addressed several issues, including the protection of IP rights. The parties agreed on changes in China related to judicial procedure and enforcement in IP cases, the definition of trade secret to include confidential business information, combating online infringement with a new notice and takedown system, geographical indications, and bad faith trademarks, among other changes.
China also agreed to extend patent terms for novel drugs, thereby providing additional protection for both domestic and foreign pharmaceutical companies. These companies also will now receive pre-market notification when a generic drug is approved, before it enters the marketplace. Agreement provisions provide the patent holder with a mechanism for pre-marketing resolution of patent disputes, akin in principle to the Hatch-Waxman framework established in the U.S.
The Agreement should enter into force in mid-February and China is to submit an Action Plan to strengthen IP protection within 30 days of the Agreement taking effect. IP counsel should be aware of changes and consider them as they plan their China strategy going forward.
Listen as our authoritative panel of patent attorneys discusses the Chinese Action Plan, the proposed Fourth Amendments of Chinese Patent Law, potential implementation avenues, and the agreed-upon changes and how they will impact IP. The panel will address the effect on the different forms of IP protection--patent, trademark, copyright, and trade secrets. The panel will also provide guidance on the steps companies can take to prepare for the changes as they go into effect and leverage the changes.
Outline
- Patents
- Patent term adjustment for all patents
- Pharma-related patents pre-marketing notification (patent linkage)
- Pharma-related patents patent terms extended
- Post-filing supplemental data
- Trademarks
- Geographical indications
- Bad faith trademarks
- Copyrights
- Trade secrets
- Combatting online infringement
- Enforcement--bilateral cooperation on IP protection
- Best practices
Benefits
The panel will review these and other priority issues:
- What impact will the provisions relating to extension of patent term in China have?
- How does the new Agreement change the definition of trade secrets and change the threshold for initiating criminal enforcement?
- What impact does the Agreement have on geographic indications and what additional protections does it provide?
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