Exam 17: Protecting and Licensing Intellectual Property

A field of use limitation in a licensing agreement restricts the licensee's ability to market in certain geographical areas.

Under TRIPS, a nation may decide to exclude pharmaceutical patents if it determines they are immoral.

Compare and contrast attitudes toward technology transfers in the developed countries, developing countries, and countries strongly influenced by Marxist ideology.

Compare and contrast the risks of international licensing to a company versus those associated with trading goods.

Most international licensing agreements mandate the licensee to maintain the confidentiality of the licensor's technology.

Computer programs are protected as copyrightable literary works under the Berne Convention.

Draf t a bil l t o addres s th e proble m o f gra y marke t good s o r tha t which enact s th e Leve r Rul e ( student s are expected t o do external researc h regardin g th e Leve r Rule).

Under TRIPS, until a pharmaceutical patent is actually granted, a country has no obligation to protect potential prospective rights (during the pendency of the patent application).

The impact of piracy on the revenue loss as estimated by the Motion Picture Association of America is approximately $1.5 billion per year.

Assess the relative merits of producing a new product or technology abroad as opposed to domestically.

IPR transfers from U.S. companies to joint ventures in developing countries often allow U.S. companies to avoid the legal risks and entanglements of direct investment.

IPRs include patents, trademarks, and copyright, but not trade secrets.

Exhibit 17-1 Accuraphoto USA (AUSA) owns the "Accuraphoto" trademark in the United States. AUSA produces the "SureShot" camera, which is known to consumers as a moderately priced quality product. AUSA entered into a contract with Honshu Photographic, Inc. (HPI), a Japanese corporation. Pursuant to the terms of the contract, HPI was permitted to manufacture and market "SureShot" cameras utilizing the "Accuraphoto" trademark in return for payment of royalties based upon a percentage of HPI's sales. After producing "SureShot" cameras for a short time at its Japanese facility, HPI moved production to its facility in the Philippines in order to reduce labor costs. The cameras produced at the Philippine facility utilized the "Accuraphoto" trademark but were marketed under the name "SharpShot." Additionally, these cameras contained improved electronic features incorporated into the product by HPI engineers. Despite the inclusion of these improvements, "SharpShot" cameras proved to be of inferior quality. Furthermore, "SharpShot" cameras have begun to show up on the shelves of U.S. discount retailers such as K-Mart and Wal-Mart. Additionally, several "SharpShot" cameras have been sent by American consumers to AUSA's American facilities for repair. Finally, HPI has refused to share access with AUSA to the electronic improvements incorporated into the "SharpShot" on the basis that they are confidential proprietary information. Refer to Exhibit 17-1. What remedies may AUSA seek against HPI as a result of its conduct? What do these remedies provide?

Among the recent legal and technological issues reported in the WIPO magazine available on-line, which do you believe are the most important for the U.S.? Assess their relative importance to other countries.

The greatest protection for a firm's copyrights and patents comes from the International Convention for the Protection of Industrial Property.

Company A wants to use some technology that Company B has developed, so Company A pays Company B a license fee, called a(n):

Which of the following regulatory schemes for technology transfer agreements is most indicative of a protectionist government policy?

The European Court of Justice in the Sebago Inc. v. GB Unic, SA, (1999) E.T.M.R. 681 ruled that re-imports from a EU member country to another is in violation of the Trademark Directive.

Many technology transfer agreements prevent the licensee from selling goods to persons that will bring the product back to the licensor's country for sale in direct competition with the licensor.

When a person registers a domain name with the intent to profit from the goodwill of a trademark belonging to another, it is called: