IP and International Trade

1
IP and International Trade

• Kazuyuki Motohashi
• Department of Technology Management for
  Innovation, University of Tokyo
• http//www.mo.t.u-tokyo.ac.jp/

2
Outline

• IP Panorama Chap 9
• TochNGO case trademark issues, contract in case
  of production outsourcing
• International IP application procedure
• Internationalization of patent applications
• Concluding remarks

3
International IP Application

• Territoriality of IP protection
• Domestic application
• Regional application (ex. EPO, OHIM)
• International application
• Paris Convention Keep its domestic application
  date as priority date of international
  application within 1 year (for patent, utility
  models) or 6 month (for trademark and design)

4
PCT (Patent Coordination Treaty)
JAPAN
Domestic App.
1 year
JAPAN
PCT App.
30 months
App. to A with translation
App. to B with translation
App. to C with translation
Madrid Protocol Same kind of rule applied for
trademark
5
Patent application by major countries
6
Share of domestic application by country
7
US patent Top 10 companies
8
Patent application in China by applicants
nationality
9
Patent application in China by technology and
cnoutry
10
Patent application flows
Japanese firms
Chinese (firms Individual academic)
US firms
11
Implications

• What could be done by TochNGO?
• Trade mark and patent search in Tostralia
• Paris convention?
• Appeal for invalidation/revocation?
• No way for stop imitation (needs IP)
• Reality for small firms
• Can you go to court for infringement case?
• Careful consideration of production outsourcing
  decision (black box approach, if necessary)