Vol. 3 No. 3 January/February. 2011:
Pursuing Trademark Reform in China

Pursuing Trademark Reform in China:
Who Will Benefit—and Are the Proposed Changes Enough?

By Nadine Farid Johnson

The motivation to amend China’s trademark law has grown along with the Chinese economy. China first enacted trademark protections just 30 years ago, and it has since managed the enormous task of expanding them to integrate international norms. Its new Proposed Trademark Law will offer important additional safeguards for both foreigners and Chinese nationals, but integration issues will continue to require attention.

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The following articles from Vol.3 No.3 January/February. 2011
are available to Section members.
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A Practical Patent Strategy for U.S. Companies Doing Business in China
By Edward W. Tracy Jr., Yuqing Lin, Fuli Chen, and Bradley D. Lytle

General Electric, Procter & Gamble, Motorola, and other large U.S. companies were pioneers in patent filing in China, and their Chinese patent strategies are carefully considered. However, the authors find that nearly all U.S. company managers have outdated perceptions of the Chinese patent system and fail to fully account for the fast-changing IP environment in China. read more...

Litigation Strategies That Win or Lose Patent Jury Trials
By Eric A. Rudich

Many believe that complex scientific and technological issues render the outcomes of patent jury trials inherently unpredictable. However, the author studied 15 high-stakes patent trials. He utilized a widely accepted decisionmaking model for understanding how jurors arrive at verdicts in patent cases, and, in this presentation of his findings, he identifies strategies and tactics that can lead to adverse or successful jury verdicts. read more...

Consequences of the Federal Circuit’s New Reliance on Federal Common Law for the Interpretation of Patent Assignment Agreements
By Ian N. Feinberg, Eric B. Evans, and Andrew M. Holmes

Companies rely on invention assignment agreements to secure ownership of the intellectual property their employees create. State law governed interpretation of these agreements until the Federal Circuit decided DDB Technologies v. MLB Advanced Media in 2008. The authors warn companies to quickly conform their agreements to meet DDB requirements or risk losing their standing to sue on patents they think they own. read more...

Functional Claiming: § 112 ¶ 6 Still Difficult After All These Years
By John F. Triggs

The option of functional claiming provided by 35 U.S.C. § 112 ¶ 6 allows for claiming by how the invention functions, rather than by a structural description. It was enacted to give patent prosecutors an additional way to claim an invention, but it has evolved instead as a means of limiting patent rights. In fact, current judicial guidelines have created an unhelpful “I know it when I see it test” for identifying method claims that invoke § 112 ¶ 6. The most coherent test, the author concludes, is the USPTO’s. read more...

Copyright Statutory Damages and Due Process Excessiveness: Why Gore and State Farm Punitive Damages Principles Do Not Apply
By Thomas W. Kirby

Systematic unauthorized copying can result in seven- or eight-figure liability because statutory damages may run $30,000 per work infringed and $150,000 per work for willful infringement. This potent remedy serves Congress’s goal of encouraging copyright compliance. Tenenbaum, however, improperly applied the Gore/State Farm procedural due process doctrine to depart from nearly a century of judicial refusals to reduce statutory damages. read more...

Mobile Sweeps Promos Left in Limbo by Federal Courts: Mitigating Risks Crucial for Marketers
By Alan L. Friel

Marketing campaign review often falls to IP counsel, especially in-house. The review process requires an understanding of regulatory schemes governing advertising and promotions. Both mobile marketing and sweepstakes are highly regulated and present traps for the unwary. Mobile sweepstakes are all the rage. This article outlines the issues you need to know about when a mobile campaign crosses your desk. read more...

Product Review
By Keith D. Weiss

I2P Group News
By Samson Helfgott

Recent Developments in IP Law
By John C. Gatz

From the Hill
by Hayden W. Gregory

Meeting of the Minds
By G. Ross Allen and Francine D. Ward

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