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:
For Registration, Phone: 734-9211

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


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