Thursday, December 11, 2014

PROTECTING PATENT RIGHTS IN COLLABORATIVE INVENTING



            The tidal wave of online usage of social networks has spilled over into collaborative business networks.  Social networks such as Facebook are being used to create and market new ideas and innovations using social networking webpages.  Collaborative innovation networks have sprung up as online communities of like-minded people who choose to work together on innovation projects.  The speedup in investor expectation for startups to get to market using online development and product marketing tools has also given rise to online startup funding networks known as crowdsourcing.  For example, Kickstarter allows users to post project funding proposals on its website to vie for online (crowd) funding.  But what happens to patent (i.e., invention) rights in collaborative inventing?  A brief outline of some of the perils and pitfalls of this phenomenon and recommendations for protecting patent rights follows.

CONFLICTING CLAIMS OF OWNERSHIP
Where a collaboration group has involved diverse users who may later disagree how they will exploit the result and share profits flowing from it, conflicting claims of ownership can arise.  This can lead to full-blown disputes and/or litigation that can tie up the innovation creators in destructive legal wrangling for years. 
In crowdsourcing, the typical terms of use, such as Kickstarter‘s for example, provide no guidance how to contract for “rewards” or “promised benefits” with online funders.  An inartfully drafted promise of benefits for crowdsourced funds can lead to funders later claiming a share of ownership or ongoing benefits (royalties) from invention rights.
As is already well-known to established companies undertaking joint research projects, it is important to define in writing in advance a collaboration group’s mission, membership and at least a general framework for ownership and apportionment of rights and benefits.  This can avoid or at least mitigate conflicting claims of ownership later.

LOSS OF INVENTION RIGHTS
Erroneous myths and misconceptions persist when it comes to invention rights, and specifically patenting, in collaborative inventing.  Many of those not familiar with the patent process still believe that they can mail a stamped and sealed invention disclosure to themselves to establish proof of their date of invention.  However, the U.S. Patent Laws were reformed by the America Invents Act (AIA) of September 2011, with full effect from March 2013, from the former “first-to-invent” system to a “first-to-file” system like the rest of world.  Under the “first-to-file” system now in effect in the U.S., patent rights belong to the inventor(s) who first file a U.S. patent application (or a foreign application in which invention priority is claimed) containing a complete enabling disclosure how to put an invention into practice.  It does not matter that an inventor has been working on their invention idea for years, or even for one day, before another party filed their patent application.  The first party to file will win!  It is important that a patent application be prepared and filed as soon an invention has been completed in its details of best implementation.
Another common misconception is that a quick provisional application can be filed to establish an official invention date and buy one year of time for a formal patent application to be filed.  But this is true only if the provisional application contains an enabling disclosure of what will later be claimed as the invention sought to be patented.  All too often an amateur inventor will self-file a provisional application with marketing verbiage stating their “idea” or “wish list” for their invention but leave out crucial details of proposed implementation.  Later on during Patent Office examination, they may be dismayed to have the patent examiner cite disclosures of the same or similar idea by others earlier, and learn that their provisional filing date cannot be relied on as a date of invention because enabling details of implementation that might be patented were not disclosed in the provisional.
Collaboration networks often hold public or online events where an invention idea may be worked on publicly by a collaboration group.  Such public or online events may constitute a publication of what the group has worked on, which would cause an immediate loss of patent rights since such “real-time” publication has occurred before a patent application can be filed.  The U.S. Patent Office imposes a requirement for disclosure of all material prior art known to an applicant for patent, including their own prior publication, otherwise any issuing patent may be attacked later for invalidity.  The collaborative group or its individual members must disclose their prior publication to the Patent Office and can only seek to patent a significant technical improvement over what the group publicly disclosed.

PRIOR ART AGAINST PATENTING
People not familiar with the reformed U.S. patent system may also believe in error that their own prior public activities (public disclosure, use, sale, or publication) cannot be cited as prior art against patenting if they are within the one-year U.S. “grace period” to filing.  But the “grace period” only applies to prior public disclosure by the inventor(s) or a party who obtained the disclosure from them.  It does not apply to prior public disclosures by other parties, even if related by their activities to development of the invention, such as marketing consultants, manufacturers and component suppliers, startup agencies that publish invention pitch descriptions, grant funding agencies that publicly post RFP descriptions and project submissions, etc.  Even a crowdsourcing project proposal by a related business entity can be deemed a prior public disclosure by another party.  Such prior public disclosures by other parties have immediate effect as prior art against patenting. 
The AIA reforms also expanded the scope of foreign prior art against U.S. patenting.  Besides U.S. public uses, sales, publications, and U.S. and foreign patent publications, the AIA expanded qualifying prior art to include documented instances of prior public use or sale of the invention in foreign countries, as well as the prior filing of a foreign patent application with an enabling disclosure (even if in a foreign language) anywhere in the world.  Foreign filing dates are typically 18 months earlier than their date of publication, which makes it even more imperative that a U.S. patent application be filed as soon as an invention is completed.  In one recent U.S. patent court decision, a foreign publication by an off-shore manufacturer of an invention product was held to be qualifying prior art against patenting.
            Collaboration networks often have members in other countries who may seek to patent in their own countries.  Under the AIA expansion of foreign prior art applicable against U.S. patent applications, a foreign patent application on what the collaboration group worked on can be cited as prior art as of the date of its filing against any later-filed U.S. patent application, even if the U.S. applicant contests whether the foreign applicant is the true inventor of the subject matter disclosed.

POINTERS FOR PROTECTING PATENT RIGHTS IN COLLABORATIVE INVENTING
Define in advance a collaboration group’s mission, membership, and rights and benefits in any invention(s) developed. 
File a patent application as soon an invention has been completed with full enabling details of best implementation. 
If a collaboration group chooses to make its work public, disclose that information to the Patent Office, and take care to claim only significant technical improvements over that.
Be aware of what competitors (or even related parties) may disclose publicly in the U.S. and globally, and file your U.S. patent application as soon as possible before any public disclosures.
Be aware of the risk that collaboration networks are public forums that can kill patent rights, and tailor your participation accordingly.


Leighton K. Chong
IP & Patent Attorney
December 2014

Wednesday, February 5, 2014

IPR BENEFIT SHARING IN OCEAN RESOURCE TECHNOLOGIES



The world's burgeoning population and continual pressure for better standards of living will require ever greater resources for living needs at the same time that conventional energy sources are becoming depleted or unusable, food sources depleted and insufficient, and clean water supplies polluted and scarce. To where will humans turn as the available resources on Earth run out and human needs continue to grow?
71 % of our Earth's surface is covered by ocean, and 80% of the heat of the Sun shining daily on Earth is stored as thermal energy in the ocean. By pumping or upwelling just a small fraction of this cold deep ocean water for heat exchange with warm surface waters, the stored energy if converted by ocean thermal energy conversion (OTEC) into electricity has a capacity of 10,000 times the energy used by mankind daily. The OTEC heat exchange cycle can also be used to generate potable water by flash evaporation, and OTEC electricity can be used to generate clean fuels such as hydrogen and ammonia by electrolysis.  Each megawatt of OTEC production could supply energy, fuel and water sufficient for about 50,000 persons (world usage averages).
Deep ocean waters store high concentrations of dissolved minerals such as nitrates, phosphates, and other nutrients that if brought to the surface could act as natural fertilizer for growing marine biomass on submerged ocean racks.  Marine biomass can be processed into clean biofuels such as butanol, and the biomass residue can be further processed into organic fertilizers, protein-rich animal and fish feeds, bioactive pharmaceuticals and other high-value marine bioproducts.  Fishfeed from marine biomass and OTEC electricity can be supplied to tethered ocean cages for growing pelagic species of fish.  The discharge of nutrient-rich cold water into the euphotic zone of surface waters could stimulate marine life growth and thereby enhance marine food chains to revitalize wild fish stocks.
Pumping cold deep ocean water to the surface in large volumes for utility-scale OTEC energy production could have beneficial impacts on the marine environment and atmosphere.  Each megawatt of OTEC energy would bring about 50 million gallons of cold ocean water to the surface per day.  The large-scale cooling of surface waters could reduce or mitigate the formation of tropical storms and hurricanes.  Other environmental benefits could include absorption of carbon dioxide from the atmosphere to reduce greenhouse gases that contribute to global warming and ocean acidification.
Realization of this vast potential for producing food, water and energy from the ocean represents a new frontier for humanity that has been called the "Blue Revolution".  Like the “Green Revolution” of the past generation that brought about an order of magnitude or greater of productivity in agricultural and other land-based food production, the Blue Revolution has the potential to provide food, water, and energy sufficient for mankind’s needs.  However, rather than being land-based, the Blue Revolution is to be carried out in the oceans.  This is a planetary resource that under the United Nations Convention on the Law of the Sea has been declared to be “the common heritage of humanity”.
Research efforts over the past 40 years have shown that OTEC power generation can support integrated production of energy, food, water and a variety of marine bioproducts on ocean platforms or "plantships" deployed in ocean waters.  OTEC­ powered plantships can be deployed in ocean spaces far removed from coastal areas occupied for human recreation, fisheries, marine sanctuaries, ports, and navigation lanes. Under the United Nations Convention on the Law of the Sea[1] (UNCLOS), countries bordering the oceans are deemed to have territorial waters extending to 12 nautical miles (20 km), contiguous zones of enforcement extending to 24 nautical miles (40 km), and administrative jurisdiction over exclusive economic zones (EEZ) extending 200 nautical miles (340 km) from shore. 
UNCLOS provides that ocean-bordering nations have exclusive rights to exploit their EEZs economically, including through fishing rights, mineral extraction from the seabed, and permitting the deployment of ocean structures, artificial islands, and/or seabed structures.  Other nations have a right of transit for vessels through the EEZ and may share in access to fishing and other resource gathering to the extent not utilized or otherwise permitted by the ocean-bordering nation.  Ocean waters beyond the EEZ are defined as the "high seas" or "international waters", which are reserved as "the common heritage of humanity" from exclusive appropriation or exploitation by any country.
The U.S. is a signatory to the UNCLOS but has not yet ratified the treaty to be binding as U.S. law (first blocked by President Reagan in a dispute over the definition of boundaries of the continental shelf).  However, the U.S. observes its ocean space definitions and framework of rights and duties.  U.S. administrative regulation of activities in the EEZ continues to be in a transitional state moving toward codification.  Environmental and resource use regulations and other laws have effect within U.S. territorial jurisdiction of territorial waters extending to 12 nautical miles, and may be enforced within agency discretion to contiguous zones extending to 24 nautical miles. 
For realization of the potential of the Blue Revolution, much research on testing and development of best practices and technologies for ocean resource production needs to be done.  Intellectual property rights (IPRs) in technology innovations are typically claimed by developers and inventors and secured in their home countries as well as other countries of the world.  Technology developments are often generated by multi-lateral or international research collaborations, as global companies and foreign governments seek to exploit opportunities in other countries.  The global system of intellectual property (IP) rights has been developed to protect innovation and invention rights within and among the nations of the world.  Important questions of benefit sharing in IPRs would be raised for Blue Revolution technologies developed through multi-lateral or international research conducted in ocean zones, and used in later deployment of ocean resource production technologies in the ocean zones of other countries.
Historically, knowledge of best practices and development of economical and efficient technologies have been led by the more advanced nations that have the technological and economic wherewithal to explore and innovate new technologies.  But the more advanced nations have tended to use strong IPR regimes for market dominance and profit­making in globalized world trade.  This has resulted in ongoing trade conflicts and economic inequities.
The "Green Revolution" of the 1960s and 1970s greatly improved agricultural productivity but was dominated by industrial corporations of the more advanced countries controlling high-yield seeds, fertilizers, & pesticides for sale in lesser developed countries at high cost.  Advanced medical and drug technologies are another area where advanced countries have controlled access to needed drugs and therapies, such as AIDS drugs, to the detriment of lesser developed countries in Africa and Asia.
Developing countries have long sought to promote developmental policies toward access to life-sustaining technologies through benefit sharing in IPR rights, and this position has been supported in many UN studies such as by UNESCO and UNCTAD.  Most recently, developing countries have sought to negotiate IPR access to climate change technologies as a condition to signing on to world protocols to reduce greenhouse gas emissions.  However, multi-national companies and the IPR agencies of the more advanced countries have resisted attempts for IPR access, recommending instead that developing countries should strengthen their own creative economies to build up their IPR assets.[2]
Because the oceans are a shared, open, and accessible planetary resource available to mankind worldwide, it has been asserted that the benefits of ocean resources production should be shared with all humanity.  In particular, it has been suggested that IPR benefits in ocean resource technologies should be shared by allowing ocean resource technology access to all countries of the world. 
The case for IPR benefit sharing in ocean resource technologies is particularly compelling where multi-lateral or international cooperation is necessary for global companies and foreign governments to conduct research within or in proximity to ocean zones of developing countries.  Those countries should be allowed to share in the benefits of such research in exchange or as equitable consideration for permitting the research to be conducted within or in proximity to their ocean zones.  As effluents and other effects of production technologies practiced in one ocean zone can easily flow and create impacts in adjacent ocean zones, IPR benefit sharing should also be considered when developed ocean resource technologies are later deployed within or in proximity to the ocean zones of bordering countries. 
Much ocean research will necessarily entail cooperative or joint research efforts.  In joint research, it is common to jointly manage or pool together IPR rights in order to remove ownership and enforcement issues as obstacles to sharing research work among participants.  Also, in circumstances where multiple parties collaborate to develop and optimize different parts of a complex system, such as occurred in the development of digital television and microprocessors, allowing component developers to be licensed under collective IPRs for the whole system can remove the legal friction that might otherwise occur from the assertion of IPR rights between contributing parties.
It is also important to remember that IPR rights are territorially based.  That is, the legal monopoly granted by a patent obtained in a given country under its patent laws only apply within the territorial jurisdiction of that country.  Practice of an IPR-protected technology in the ocean EEZ of a country would technically occur outside of the country’s jurisdiction, and therefore IPR rights obtained in that country could not be enforced to prevent deployment and use of the IPR-protected technology in the ocean EEZ outside of that country’s jurisdiction.
Another consideration weighing in favor of IPR benefit sharing in ocean resource technologies is that the patent systems of almost all countries of the world are “first-to-file” systems in which a patent can only be obtained if a patent application is filed before a first publication of the invention from or through another source.  Under the “America Invents Act” enacted in September 2011, the U.S. also reformed its patent system to become a “first-to-file” system like the rest of the world.  In multi-lateral or international research efforts, it has become common for joint research parties to publish research data for access by participating parties and/or by sponsoring research institutes, companies, and government agencies.  Such publication of research information before a party has filed for patent on any invention(s) contained therein could preclude a valid patent from being obtained under “first-to-file” patent systems.  Therefore, ocean resource technologies developed through multi-lateral or international research might inherently preclude patenting anywhere unless total secrecy from prior publication can be enforced.
Finally, as a broad international protocol under UNCLOS, international waters beyond designated ocean EEZs up to 200 nautical miles from shore are deemed to be “the common heritage of humanity", which no nation or entity can appropriate for its exclusive use.  Effluents and other effects of ocean resource production technologies practiced in one country’s ocean zone can easily flow and create impacts in international waters.  Therefore, benefit sharing of IPRs in ocean resource technologies with all countries of the world might be considered equitable compensation for any entity’s use of IPR-protected ocean resource technologies that may affect international waters.
In summary, benefit sharing of IPR rights in ocean resource technologies for production of food, water and energy from the oceans for humanity’s needs may become an important new paradigm in the Blue Revolution.  Such IPR benefit sharing would be promoted by the shift from land-based use of technologies and territorial-based IPR systems to the use of ocean resource technologies in the oceans, as well as consistent with international protocols for use of the oceans as the common heritage of humanity.



[1] United Nations Convention on the Law of the Sea, adopted December 1982, ratified by 166 countries, see UN Convention website: http://www.un.org/depts/los/convention_agreements/convention_overview_convention.htm
[2]  "Access to Climate Change Technology By Developing Countries", by Cynthia Cannady, IP*SEVA, ICTSD Global Platform on Climate Change, Trade Policies and Sustainable Energy, Issue Paper No. 25, Sept 2009.

Friday, June 21, 2013

Release of my book ‘Song of Planet Earth’

Dear Friends:


I am pleased to announce the release of my book ‘Song of Planet Earth’.

In May 2008 I took a trip around the world, seeing the continents unfold below on daytime flights flying west. It allowed me to experience the Earth as a whole planet for the first time. I kept a travel diary of my experiences in the cities and regions I visited, and this became the start of my idea for this book.

The story tells of Alvin, a writer on nuclear arms control, who takes an around-the-world tour.  While in Istanbul, he witnesses another tour guest turn over a folder for classified material to some shadowy looking men. He suspects a terrorist plot to steal nuclear weapons from a NATO airbase and tries to alert authorities to stop it. But he has no proof other than the photos he surreptitiously took of the transaction. What can he do? 

Written as a travel adventure, the book makes a scientifically-based inquiry whether humankind has the will and the wisdom to survive nuclear weapons proliferation and other grave threats to our world. OK, it's not easy reading, but I think you will find it eye-opening and entertaining!  If you like it, please let others know by writing a review online :>)


The book is now available for order on Amazon:
http://www.amazon.com/Song-Planet-Earth-Leighton-Chong/dp/1481758993/ref=sr_1_1?ie=UTF8&qid=1371671303&sr=8-1&keywords=Leighton+Chong
Hardcover 6 x 9 in
142 pages
ISBN 9781481759007

Softcover
6 x 9 in
142 pages
ISBN 9781481758994

It will also be available in one to two weeks on Barnes & Noble Books, and the major ebook sites for download.


E-Book
142 pages
ISBN 9781481759014

Saturday, January 26, 2013

THE BLUE REVOLUTION: BENEFIT-FOR-HUMANITY POLICY OF IP SHARING




Realization of the vast potential for providing the basic necessities of energy, food and water for mankind’s needs from sustainable ocean resources production is a new frontier called the “Blue Revolution”. Because the oceans are a shared, open, and accessible planetary resource available to mankind worldwide, it is proposed that the benefits of sustainable ocean resources production be a shared benefit for humanity.


OTEC power generation in deep ocean waters can support integrated production of energy, food, water and marine bioproducts on ocean platforms or “plantships”. OTEC-powered plantships can be deployed in spacious ocean environments away from coastal recreational areas, fisheries, marine sanctuaries, ports, and navigation lanes. To lead the way to realization of the Blue Revolution, much research needs to be done, and the most important is to provide answers to questions of feasibility, best practices and technologies, and environmental impacts and benefits through research conducted under real conditions in the ocean.


Blue Revolution Hawaii (BRH) advocates the building of a Pacific International Ocean Station (PIOS) as the world’s first in-ocean platform to conduct feasibility research, technological testing and environmental assessments for ocean resources development in Hawaiian EEZ waters. The Hawaiian southwest EEZ has good deepwater thermal gradient conditions, ocean waters that support a wide range of fish and other marine life, and no conflicts with other international boundaries. Hawaii is home to pioneering work in OTEC, having the distinction of achieving the world’s first net-positive OTEC electricity generation in 1979. It is also home to NELHA, the world’s pre-eminent laboratory for deep ocean water processing of potable water and growing algae, fish, seafood, and other marine co-products.


PIOS is envisioned to be a large, semi-buoyant, artificial island platform engineered to be stable in harsh ocean conditions and weather. It is to have a “dryland” center platform surrounded by a retainer-wall lagoon irrigated by nutrient-rich deep ocean waters. The lagoon provides space for growing macroalgae, fish, and other seafood in nutrient-rich effluent waters. An OTEC plant would provide sufficient electrical capacity for a complete range of research activities, resource processing, and living/working quarters to accommodate international researchers, crew and visitors. PIOS in operation would host invited international research teams engaged in sponsored research projects. An international cooperative research management agency is to be formed or engaged to manage research activities on PIOS. PIOS success in R&D on OTEC-based production platforms could serve as a model for OTEC-based resources development in oceans worldwide.


Historically, knowledge of best practices and development of economical and efficient technologies have been led by advanced nations that have the technological and economic wherewithal to explore and innovate. But advanced nations have acted in their own self-interest by using such technological advances for their own military and strategic interests, and in the current era of globalized world trade, for market dominance and profit-making by their own industrial corporations. This has resulted in political (trade) conflicts and global inequity caused by the past zero-sum approach of self versus others interests.


For example, the so-called “Green Revolution” of the 1960s and 1970s greatly improved agricultural productivity but was dominated by advanced countries and industrial corporations controlling high-yield seeds, fertilizers, & pesticides for sale to individual farmers in poorer countries at high cost. Advanced medical and drug technologies represented another arena where advanced countries have controlled access to needed drugs and therapies to the detriment of those in need of them, such as access to affordable AIDS drugs in lesser developed countries of Africa and Asia.


Control of new technologies is obtained primarily through securing intellectual property rights (IPRs), mainly patents applied for in principal markets, by industrial companies that research and perfect such technologies. In knowledge-based economies, securing IPR rights is indispensable to protecting the owner’s market position, competitiveness, and ability to enforce a profit premium for legally protected products. However, access to such essential-to-life technologies developed by advanced countries would present a momentous challenge for lesser developed countries.


The oceans of the world are “shared” in the sense that ocean waters flow in a contiguous fluid body. What happens in ocean waters in one territorial jurisdiction is likely to have impacts in adjacent or even regional waters.


The oceans of the world are also “open”. Under the United Nations Convention on Law of the Sea (‘UNCLOS’) adopted in 1994, and since signed by 160 nations, the territorial jurisdiction of ocean-bordering countries extends 12 nautical miles from shore. Beyond 12 miles and up to 200 miles from shore, individual nations are recognized as having an Exclusive Economic Zone which they can regulate for exploitation or marine, mineral, and ocean energy resources. However, other nations have a right of transit, and can fish or exploit resources to the extent not fully utilized by the bordering nation. Under UNCLOS, the “high seas” beyond 200 miles from shore are deemed to be the “common heritage of humanity”, which no nation or entity can appropriate for its exclusive use.


Resources in the oceans of the world are “unowned” in the sense that the legal jurisdiction and ownership rights of ocean-bordering countries extend only to territorial waters to 12 nautical miles. Beyond that, ocean waters are unregulated by the ocean-bordering countries, except for the purposes of security, economic exploitation, and environmental protection provided in UNCLOS.


Consideration of sharing access to ocean resources knowledge and technologies should also take into account that, due to high capital costs in advanced countries, the development of ocean plantships is likely to take place first in the ocean waters of lesser developed countries where capital costs may be a fraction of advanced countries, and therefore lesser developed countries are likely to provide the location, capital cost advantages, and the physical ocean environment for such research. Further, due to the advanced countries having comparatively greater wealth to secure access to energy, food and water at world commodity prices, lesser developed countries would have a greater need to ensure secure and reliable access to life-sustaining necessities of energy, food and water.  Moreover, patent and other private ownership rights would likely be unenforceable in EEZ ocean waters since they are beyond national territorial boundaries.


It is therefore proposed that a “benefit-for-humanity” policy of IP sharing could be instituted for international cooperative research conducted in the ocean such as on the PIOS host platform.  International research teams invited to conduct research on the host platform may be asked to sign an international cooperative research agreement providing for the following:


1. Research results, data, and analysis, when completed and documented in correct and accurate form, are to be made accessible by publication on the host network for access by all other research teams. Within a short time window, say one month, to allow time for correction or revision or inclusion of other necessary materials, access to published research on the host network is to be opened to the World Wide Web. Such access would share the fruits of ocean research with all countries of the world and preclude any research party from patenting.

2. Any improvements derived from the results of ocean research may be patented in the home country of the improvement-inventing research team. Patenting in the inventor’s home country is permitted in order to preserve the inventor’s competitive position in their home country.

3. The international cooperative research agreement may also provide that the patentee of any improvements derived from the ocean research shall grant an open license for all to use the improvement freely in all other countries.


The proposed "benefit-for-humanity" policy of IP sharing of Blue Revolution technologies and methods could enable research teams of lesser developed countries to start on a path to technological parity in ocean resources production with advanced countries. Private companies can maintain their competitive positions in home markets by the exception of allowing home-country patenting of improvements derived from shared ocean research. Improvements made by private entities that are not based on shared ocean research can be patented as is now done conventionally. The proposed policy instituted by international cooperative research agreement on ocean platforms could provide a model for revamping the world IP system to better share access to life-sustaining technologies derived from ocean research, while preserving the competitive position of inventors through home-country IP ownership rights.

Monday, September 3, 2012

KCC/IPTL Intellectual Property Management Course, Fall 2012 Term


Date/Time: September 13, 2012, 6pm to 8pm, and consecutive Thursday evenings
Location: Kapiolani Community College, Manono Building, Room 104
Website or Map: http://continuinged.kcc.hawaii.edu
For Registration, Phone: 734-9211
Email: srtsukano@hawaii.edu


The Intellectual Property Management Course, co-directed by Martin Hsia and Leighton Chong, will again be offered this Fall Term by KCC Continuing Education Dept. in conjunction with the IPTL Section of HSBA. It is a 10-week series designed for innovation companies and entrepreneurs to gain practical and in-depth knowledge in protecting their intellectual property (IP) assets, establishing best practices for management of IP, and optimizing IP strategies in the U.S. and foreign countries.


The series will cover the main areas of IP protection, including patents, trademarks, copyrights, trade secrets and company information. It will pay particular attention to business issues relating to technology, innovative products, product brands, media, music and software. New sessions are offered this year on Publicity and Privacy Law and Native Hawaiian IP Rights.


The series will be held at KCC Diamond Head Campus, Manono Building, Room 104, from 6 pm to 8 pm, on 10 consecutive Thursday evenings starting September 13. Attendees can register for any sessions at $35/each, or all sessions at a discount to $300.


A course outline of topics is as follows:


1. Intellectual Property (IP) Management Overview: Martin Hsia, Attorney (Sept 13)
a. How IP protections protect major business assets and enterprise value
b. Technology, product designs, brands, copyrighted works, business information
c. Importance of establishing internal company management of IP
d. How strong IP management adds to and protects enterprise value
e. Real-life examples: what to do, what not to do


2. Patenting Technology, Innovative Products: Leighton Chong, Attorney (Sept 20)
a. What can be patented?
b. Defining what is “new” and “non-obvious” from what is “old”
c. Process for filing for patent: prior art search, completing R&D, documentation
d. Types of patents: provisional vs. formal; utility; design; plant patent
e. Patent prosecution: examination before the U.S. Patent Office over prior art
f. IP management: R&D reporting; documenting inventions; clearing right-to-use


3. Trademarking Product Names, Consumer Brands: Seth Reiss, Attorney (Sept 27)
a. What kind of protection does a trademark offer?
b. When is a new trademark “distinct” from prior trademarks?
c. How does a trademark acquire value?
d. How do you secure and register a trademark?
e. How are trademark rights enforced?
f. Company trademark management: clearance, filing, use, maintenance


4. Copyrights: What Creators, Users Need to Know: Stephen Street, Attorney (Oct 4)
a. What can be protected by copyright?
b. “Original” work versus “pre-existing” or “unprotectible” matter?
c. How are copyright rights enforced?
d. What is “fair use”? How much can you use without infringing another’s work?
f. Independent contractors; work-for-hire agreements; company IP management


5. Protecting Trade Secrets, Company Information: Martin Hsia, Attorney (Oct 11)
a. How are trade secrets and company proprietary information protected?
b. What are reasonable measures to protect secrecy?
c. Company employee agreements, confidentiality obligations
d. Confidentiality in joint development, supply, subcontractor agreements
e. Licensing of confidential engineering data, mfg know-how, databases
e. Company information management: employees, security, inventory/audits


6. Publicity and Privacy Law, Shannon Pierce, Attorney, Goodsill Anderson et al (Oct 18)
a. How does a right of publicity arise and what does it cover?
b. Can a right of publicity be inherited? Who inherits it? In what states?
c. What are typical terms for license under a right of publicity?
d. How does a right of privacy arise? Do employees have a privacy right?
e. When does a person become ‘newsworthy and lose a privacy right?
f. What legal remedies are there for invasion of a right of privacy?


7. Native Hawaiian IP Law, Danielle Conway, UH Law Professor (Oct 25)
a. Do native (indigenous) people have intellectual property rights?
b. Who owns native IP rights? Practitioners? Community? Native trust?
c. Examples: traditional medicine; cultural arts/practices; chants; biologics
d. Are native IP rights recognized under U.S. or state laws? World laws?
e. How can native IP rights be protected? Are laws necessary?


8. Profiting from Patented Technology Licensing: Leighton Chong, Attorney (Nov 1)
a. Securing IP rights early; developing strategic portfolio for technology or product
b. Adding value: expanding the scope of product exclusivity
c. Dealing with competitors: competitive monitoring, strategic alliances, enforcementd. IP monetization options: licensing, sale, enforcement of infringement damage claims
e. IP valuation methodologies: depends on context of IP use or assertion


9. IP Management of Copyrighted Media, Original Works: Martin Hsia, Attorney (Nov 8)
a. Expanding registration of copyright to modified or improved works
b. Giving notice of copyright; policing infringements, counterfeits, takedowns
c. Digital rights management: watermarks, tracers, locks, encryption, monitor bots
d. Shrink-wrap licensing; limited use licensing; differential pricing
e. Civil & criminal enforcement; Customs, Intl Trade Commission exclusion orders


10. IP Management of Foreign IP Rights: Leighton Chong, Attorney (Nov 15)
a. Developing an international IP strategy: strict time requirements & budgeting costs
b. Multiplied costs: individual countries, foreign IP agents, translations, annual fees
c. Business options: licensing, supply contracts, spinning off rights to foreign partners
d. Time management: home country filing, intl reservation of rights, foreign filings
e. Finding foreign partners: trade councils, export services, foreign IP firms, brokers






Wednesday, May 9, 2012



PRESENTATION TO HAWAII INVENTORS' CLUB, MAY 8, 2012












Wednesday, January 4, 2012

Public Comment: Hawaii as Potential Location for USPTO Satellite Office

To: Deputy Chief of Staff
U.S. Patent and Trademark Office
January 4, 2012



This submission is provided as public comment in response to the USPTO’s proposal for potential additional locations for USPTO satellite offices, as noticed in Federal Register Notice 11-69 on November 29, 2011.

In May 2007, Director Dudas, Commissioner Doll, other USPTO officials, and senior officials of the other major patent offices (Europe, Japan, China, Korea and Australia) attended a multilateral patent office coordination conference in Honolulu, Hawaii, at the host invitation of then Hawaii Governor Linda Lingle. While there, the USPTO contingent met with Hawaii officials, members of the patent bar, and industry executives for a presentation of the suitability of Honolulu for a regional patent examining office to meet an important goal of the USPTO 2007-2012 Strategic Plan. An electronic copy of the 2007 presentation to USPTO is attached. Among the important advantages noted for locating such an office in Hawaii were these:


1. Hawaii has a large (~1600 per year), ethnically diverse pool of US-citizen science and engineering graduates and expat graduates residing in the US Mainland seeking high-level technical employment in Hawaii. Hawaii has a diverse mix of family-oriented social cultures where parents typically prefer that their children find employment and stay in Hawaii, and graduates forced to seek employment outside of Hawaii often want to return.


2. Hawaii’s local pay scale for Sci&Engg graduates is about 30% lower than the USPTO pay scale for patent examiners, making patent examiner employment highly attractive and likely to have a strong retention rate for Hawaii examiners relative to local technology jobs (if they existed).


3. Hawaii has centers of technical excellence in biotech, agricultural tech, ocean and earth sciences, telemetry, communications, dual-use defense technologies, astronomy and renewable energy.


4. Hawaii is a preferred host venue for Asia-Pacific conferences on international patent and IP policies, often held at its unique East-West Center for International Studies, making Hawaii an ideal location for a far-West presence of the USPTO.


The USPTO’s key criteria for locating a satellite office are deemed to be met as follows:


(1) A Hawaii USPTO office location would provide a key asset for technology clustering (along with per-capita high levels of university and institutional research and strong U.S. Defense research presence) that would promote increased outreach activities to better connect local entrepreneurs and innovation companies with the USPTO


(2) A Hawaii USPTO office would have strong relative advantages in pay scale incentives and patent examiner retention and provide an unmatched quality of life.


(3) A Hawaii USPTO office would provide a large annual pool of qualified Sci&Engg candidates for recruitment of patent examiners.


(4) A Hawaii USPTO office would stimulate and likely increase the filing of patent applications from Hawaii inventors.


(5) Hawaii has strong technology competencies and assets in biotech, agricultural tech, ocean and earth sciences, telemetry, communications, dual-use defense technologies, astronomy and renewable energy that would improve quality of patent examination by examiners hired in Hawaii in these fields.


(6) Hawaii currently has rentable office space at about 78% of capacity and at rent scales comparable to Arlington, Virginia.


(7) The University of Hawaii system has about 44,000 matriculants annually, $270 million per year in research funding, and strong technology competencies and assets in biotech, agricultural tech, ocean and earth sciences, telemetry, communications, dual-use defense technologies, astronomy and renewable energy.


(8) Hawaii is home to a regional high-level biosafety laboratory, UH Cancer Research Center, Natural Energy Laboratory of Hawaii Authority (ocean water and renewable energy research), U.S. Defense space surveillance and supercomputing center, and Mauna Kea world astronomical observatories.


(9) A Hawaii USPTO office will likely stimulate technology entrepreneurs and innovation companies and have positive economic impacts in Hawaii, the Pacific island nations, and the Asia-Pacific region.


In summary, we believe that Hawaii would be an ideal location for a USPTO satellite office.  Thank you for consideration of this mutually advantageous opportunity.




Yours truly,
Leighton K. Chong