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
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
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
Monday, August 29, 2011
China Is Now #3 in the World in Patent Filings
[The following is excerpted from an article by Rachel Armstrong posted by Reuters, Thursday August 25 2011]
Patent filings are soaring across most sectors in China -- last year there were 313,854 patents registered in the country according to the Thomson Reuters Derwent World Patents Index, a 12 percent rise from 2009. China was the third highest filer of patents in 2010, just behind the U.S., which registered 326,945 and Japan with 337,497. Japan has been the leading patent filer in the world for the past decade but its lead is narrowing, with its filings volume down 12 percent since 2006. China is up 83 percent.
"A lot of know-how flows through the contract manufacturer. The next logical step for these contract manufacturers is to climb up the value chain," said Elliot Papageorgiou a partner at intellectual property law firm Rouse in Shanghai. And as they move up the value chain, they use patents to protect some of the knowledge and ideas they've picked up as contract manufacturers in order to give them room to manoeuvre in the increasingly competitive market.
"In the last year and especially this year, demand for IP work is growing very fast," said Anthony Chen, a patent lawyer for Jones Day in Shanghai. Douglas Clark, a barrister specialising in intellectual property cases who has worked in China since 1993 says the size of the industry has surged in recent years.
The surge in the size of patent portfolios is causing a corresponding rise in litigation. ... These lawsuits are hardly surprising given that their foreign counterparts such as Apple, Google and Samsung are all trying to use an armory of patents to [control] competition in the global smartphone industry. Google Inc's biggest deal ever, the agreement to buy Motorola Mobility Holdings Inc this month for $12.5 billion, is an attempt to buy insurance against increasingly aggressive legal attacks from rivals such as Apple Inc.
The influx of patents not only underscores China's growing strength in the telecom sector, it also reveals a change afoot in the country's attitude toward intellectual property. While the change is hardly air-tight, China is moving more toward recognising ideas and their origins, rather than copying and proliferating. Intellectual property civil litigation cases filed in China rose by 37 percent to 41,718 last year according to the country's Supreme People's Court.
This is driven in part by China's plan to become a high-tech power house, with a target for 2.5 percent of its gross domestic product to come from research and development by 2020. It's trying to reach this goal by subsidising the cost of patents for Chinese companies and stricter enforcement of intellectual property rights.
"While traditionally in China you are supposed to share knowledge, the government is also aware that if you don't protect IP rights you don't attract investors and the nation can't develop the high-tech industries it wants," said Isabella Liu, a partner at Baker & McKenzie in Hong Kong.
[Leighton's comments:]
The above underscores the unmistakable trend in China to recognize and manage intellectual property rights in the landscape of business competition, both domestically in China and abroad in export markets. As I have noted in my previous blog articles, Hawaii technology companies and innovation businesses should protect their intellectual property rights in the U.S. through patent filings, and also consider whether to acquire foreign patent rights through timely international filings in countries with booming markets such as China for possible value in tech transfer transactions.
Patent filings are soaring across most sectors in China -- last year there were 313,854 patents registered in the country according to the Thomson Reuters Derwent World Patents Index, a 12 percent rise from 2009. China was the third highest filer of patents in 2010, just behind the U.S., which registered 326,945 and Japan with 337,497. Japan has been the leading patent filer in the world for the past decade but its lead is narrowing, with its filings volume down 12 percent since 2006. China is up 83 percent.
"A lot of know-how flows through the contract manufacturer. The next logical step for these contract manufacturers is to climb up the value chain," said Elliot Papageorgiou a partner at intellectual property law firm Rouse in Shanghai. And as they move up the value chain, they use patents to protect some of the knowledge and ideas they've picked up as contract manufacturers in order to give them room to manoeuvre in the increasingly competitive market.
"In the last year and especially this year, demand for IP work is growing very fast," said Anthony Chen, a patent lawyer for Jones Day in Shanghai. Douglas Clark, a barrister specialising in intellectual property cases who has worked in China since 1993 says the size of the industry has surged in recent years.
The surge in the size of patent portfolios is causing a corresponding rise in litigation. ... These lawsuits are hardly surprising given that their foreign counterparts such as Apple, Google and Samsung are all trying to use an armory of patents to [control] competition in the global smartphone industry. Google Inc's biggest deal ever, the agreement to buy Motorola Mobility Holdings Inc this month for $12.5 billion, is an attempt to buy insurance against increasingly aggressive legal attacks from rivals such as Apple Inc.
The influx of patents not only underscores China's growing strength in the telecom sector, it also reveals a change afoot in the country's attitude toward intellectual property. While the change is hardly air-tight, China is moving more toward recognising ideas and their origins, rather than copying and proliferating. Intellectual property civil litigation cases filed in China rose by 37 percent to 41,718 last year according to the country's Supreme People's Court.
This is driven in part by China's plan to become a high-tech power house, with a target for 2.5 percent of its gross domestic product to come from research and development by 2020. It's trying to reach this goal by subsidising the cost of patents for Chinese companies and stricter enforcement of intellectual property rights.
"While traditionally in China you are supposed to share knowledge, the government is also aware that if you don't protect IP rights you don't attract investors and the nation can't develop the high-tech industries it wants," said Isabella Liu, a partner at Baker & McKenzie in Hong Kong.
[Leighton's comments:]
The above underscores the unmistakable trend in China to recognize and manage intellectual property rights in the landscape of business competition, both domestically in China and abroad in export markets. As I have noted in my previous blog articles, Hawaii technology companies and innovation businesses should protect their intellectual property rights in the U.S. through patent filings, and also consider whether to acquire foreign patent rights through timely international filings in countries with booming markets such as China for possible value in tech transfer transactions.
Saturday, August 13, 2011
BLUE REVOLUTION HAWAII VISION
"A blue jade dragon would be an extremely rare find!", a Chinese jade expert in Shanghai confided to us. "Blue jade seldom occurs in quantity", he said, "and it would be rarer still to carve it into a dragon, a symbol of power and success". Well, that is just the symbol that Pat Takahashi, Hawaii's longtime renewable energy expert, and Leighton Chong, attorney in intellectual property and international law, were looking for as a logo for their new undertaking, Blue Revolution Hawaii. Along with Fujio Matsuda, former State Transportation Director and President of the University of Hawaii, John Farias, Jr., former State Agriculture Director and Chair of Hawaii County EDB, and Guy Toyama, Executive Director of Friends of NELHA, Blue Revolution Hawaii was formed to advocate Hawaii's taking a leading role in tapping the vast resources of our oceans to generate virtually limitless energy, food and water for needy populations of the world.
Hawaii Can Lead the Blue Revolution
Hawaii today is 90% dependent on imported fossil fuels and 85% on shipped-in foods. Rather than being dependent on imported oil and at risk in food security, we can tap our vast ocean resources to supply our basic needs (energy, food, water) in a sustainable manner and in harmony with the marine environment. In 1979 Hawaii became renown in the scientific community for its Mini-OTEC success in producing a net electrical output from pumping cold water from the ocean depths into heat exchange with warm surface waters to produce electricity. Cold deep ocean water is also used today by new technology companies at NELHA Tech Park in aquaculture to grow shrimp, abalone, and tilapia, planned for use in building air conditioning in Honolulu, and used as a resource for production of bottled ocean water, nutrients for microalgae growing, as well as for drip irrigation of plants. We can leverage our unique assets in ocean and OTEC research, commercial fisheries, traditional and scientific knowledge in aquaculture, and state and federal government support to take a leading role in bringing the Blue Revolution to fruition.
The Blue Revolution: Sustainable Ocean Resources Development
71% of our Earth’s surface is water, and three-quarters of the heat of the Sun shining daily on Earth is stored as thermal energy in the oceans. By pumping or upwelling cold deep waters to warm surface waters for ocean thermal energy conversion (OTEC) into electricity, the thermal energy potential of the oceans would in theory be equal to 10,000 times the total energy currently used by mankind, indefinitely, at all times of the day and year. Just a fraction of the energy potential of OTEC conversion could be used to desalinate potable water to supply the needs of human populations of the world.
Deep ocean waters also store vast concentrations of dissolved minerals that if brought to the surface could act as natural fertilizer for growing 3.5 billion dry tons of new marine biomass annually from just 1% of the ocean’s surface. This would be equal to 3 times the total terrestrial biomass that can be collected annually on land in the U.S. It would also represent about 1 billion tons of carbon sequestration annually. Each ton of marine biomass could be cleanly processed into 400 gallons of clean fuels such as methanol, green diesel, ammonia or hydrogen, 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.
Pumping or upwelling cold ocean water to the surface in volumes sufficient for OTEC energy production could improve the world’s environment through cooling surface water temperatures to prevent the formation of typhoons and hurricanes, and absorbing large volumes of carbon dioxide from the atmosphere to reduce global warming. It could also have a beneficial effect of nutrient enrichment in euphotic zones of ocean waters to stimulate marine life growth and enhance marine food chains to revitalize the world’s wild fish stocks.
PIOS: Launching the Blue Revolution
The next frontier for Humanity is not Space, but the Ocean!
The first step to launching the Blue Revolution is to conduct the necessary research to provide best answers to the most optimal, sustainable, and environmentally protective ways to develop our ocean resources. We advocate the building of a PACIFIC INTERNATIONAL OCEAN STATION (PIOS) as a living/working laboratory for international cooperative research on sustainable ocean resources development. Architectural engineering firms in Japan, Australia, Netherlands, and Sweden have already begun exploring design concepts for constructing artificial islands in the ocean as integrated "green" living and working environments. Like the International Space Station, but at less than 1/10 the cost, PIOS can be deployed as the world's first artificial island in the ocean hosting important research activities of ocean universities, institutions, and agencies in international partnership under an international cooperative research agreement. Blue Revolution Hawaii is working to organize an international consortium of research and support partners to advocate for the building of PIOS in Hawaii's ocean waters. PIOS would also be the world's first floating island facility for testing in-ocean operational conditions and learning best practices for eventual widespread deployment of integrated ocean production "sea ranches" or "plantships" throughout the oceans of the world.
Our Invitation to APEC Delegates
We invite interested delegates of the 21 nations attending the Asia Pacific Economic Council (APEC) Summit in Hawaii to learn about the significant ocean resources of our State and its ideal location for hosting international cooperative research on ocean resources development through the building of the PIOS living/working in-ocean laboratory platform. Please visit our blogsite for further information and updates on our coming hospitality events to introduce the Blue Revolution Hawaii vision to visitors from around the world.
THE BLUE REVOLUTION HAWAII TEAM:
Dr. Patrick Takahashi, Leighton Chong, Guy Toyama, John Farias, Jr., Dr. Fujio Matsuda
Saturday, December 25, 2010
UPDATE ON BLUE REVOLUTION HAWAII TEAM
This is an update on recent contacts by the Blue Revolution Hawaii Team with potential partners worldwide.
On his recent trip around the world starting in September, Pat Takahashi met in Tokyo with Dr. Professor Toshitsugu Sakou, a long-time proponent of ocean research at Tokyo University and current Chair of the Marine Technology Society of Japan, and MTS Japan colleagues preparing for the MTS Oceans conference in Kobe. They discussed possibilities for research cooperation between the U.S. and Japan, and the goal of the Blue Revolution Hawaii team to promote Hawaii to take a leading role for ocean resources development in Hawaiian waters.
Overlapping with my trip to China in October, Pat and I met with Dr. Changwen Wu, Vice President and Director of Research at Zhejiang Ocean University, which is among the top 5 universities in China for ocean research. We agreed to work together to establish a research exchange relationship with the University of Hawaii and other research institutes in Hawaii. Our meeting was set up by Dr. Zhibo Tang, Director of the Dept. of Science and Technology at Zhejiang Ocean University.
Pat and I were also invited to lunch with Mr. Shi Jun Chen, Director for the Office of the Mayor of the City of Zhoushan, to discuss a possible clean-energy-city relationship with Honolulu. Zhoushan is the main island in the strategic archipelago south of Shanghai that is the easternmost point of China in the East China Sea, and has been designated for national strategic development in the coming years by the Government of China. Zhoushan was a fishing village of 6,000 people only 15 years ago, and today is a bustling international city of 1.5 million.
While Pat continued around the world, I capped off my trip to China with a meeting in Tokyo with principals of Shimizu Corp., a pre-eminent architectural engineering firm in Japan. Shimizu has been developing engineering plans to build “Green Floating Islands” in the ocean that are 3,000 meters (2 miles) in diameter and can support 30,000 residents each as entirely clean energy, self-sustaining and carbon-negative ecosystems. Shimizu showed keen interest in Blue Revolution Hawaii’s goal to have the world’s first floating island built in Hawaiian waters as a living laboratory for ocean research.
While in Tokyo I also attended the EcoBalance 2010 conference in November at the Miraikan Science Museum, delivering presentations on ocean resources developments and clean energy incentives in Hawaii. Both topics were unique in a conference that included over 200 presentations by researchers and sustainability development experts from 48 countries worldwide.
Here in Hawaii Lockheed Martin is proceeding with its plan to construct a 5 MW OTEC pilot plant in partnership with the State of Hawaii and the Taiwan Industrial Technology Research Institute starting next year in 2011. The pilot plant will enable the collection of operational and ocean impact monitoring data for optimization of design and operation of large-scale OTEC facilities in the ocean. Hawaii has the largest ocean exclusive economic zone (EEZ) of all states in the U.S. With successful pilot plant operation, Lockheed Martin plans, in Phase 2, to build a 100 MW OTEC-powered platform to generate baseload electricity and freshwater for Honolulu. The Lockheed Martin team is partnering with Makai Ocean Engineering and other Hawaii companies and the University of Hawaii.
A proposal for growing yellowfin and bigeye tuna in large, autonomous, OTEC-powered “Oceanspheres” in an ocean lease zone 3 miles off Kawaihae Harbor of the Island of Hawaii has been put forward by Hawaii Oceanic Technology Inc., Honolulu, Hawaii. The company received approval of its final Environmental Impact Statement in October 2009 and recently completed licensing permitting for operations. Such next generation fisheries in deep ocean waters hold great promise for food sustainability and security, as well as positive health, environmental and socioeconomic benefits.
Now that Neil Abercrombie has been sworn in as the new Governor of Hawaii, we hope he will make it a top priority of his Administration to have Hawaii take a leading role in the Blue Revolution. As U.S. congressman, Abercrombie has been a strong supporter of funding for OTEC research and NELHA in Hawaii. Our BRH goals for the new State Administration in 2011 include:
(1) making a proclamation of Hawaii’s taking a leading role in ocean resources development on World Ocean Day in June 2011;
(2) enabling the State’s Department of Business, Economic Development & Tourism (DBEDT) to support ocean resources development as a Strategic Industry and draft a strategic plan for ocean resources development in the State of Hawaii;
(3) retitling the State’s Department of Land & Natural Resources as the “Department of Land, Ocean & Natural Resources” (DLONR), and providing the Ocean division with staffing and technical expertise for regulation of ocean resources development in state jurisdictional waters; and
(4) inviting and facilitating external investment and research exchange relationships with global companies and organizations worldwide for ocean resources development in Hawaii.
BLUE REVOLUTION HAWAII
Located in the middle of the Pacific Ocean, Hawaii today is 90% dependent for its energy needs on imported fossil fuels, and 85% dependent on shipped-in foods. The Blue Revolution Hawaii (BRH) Team believes that the ocean surrounding Hawaii, jurisdictionally constituting the largest exclusive economic zone of any state in the U.S., can be developed as our ultimate sustainable resource to provide energy, food, and other marine products for Hawaii's needs in economically sound, ecologically protective, and environmentally beneficial ways. Our initial focus will be on public education to promote objective (science-based) consideration of ocean resources development in harmony with the environment. Ultimately, ocean resources could be developed from new archipelagoes of OTEC-powered zero-emission floating islands sustainably producing a wide range of clean-and-green marine co-products: electricity, freshwater, biomethanol, hydrogen, ammonia, seafood, marine chemicals and other commodities, while serving as floating extensions of cities and marine parks in the Hawaii ocean EEZ. Blogsite: http://BlueRevolutionHawaii.blogspot.com/
On his recent trip around the world starting in September, Pat Takahashi met in Tokyo with Dr. Professor Toshitsugu Sakou, a long-time proponent of ocean research at Tokyo University and current Chair of the Marine Technology Society of Japan, and MTS Japan colleagues preparing for the MTS Oceans conference in Kobe. They discussed possibilities for research cooperation between the U.S. and Japan, and the goal of the Blue Revolution Hawaii team to promote Hawaii to take a leading role for ocean resources development in Hawaiian waters.
Overlapping with my trip to China in October, Pat and I met with Dr. Changwen Wu, Vice President and Director of Research at Zhejiang Ocean University, which is among the top 5 universities in China for ocean research. We agreed to work together to establish a research exchange relationship with the University of Hawaii and other research institutes in Hawaii. Our meeting was set up by Dr. Zhibo Tang, Director of the Dept. of Science and Technology at Zhejiang Ocean University.
Pat and I were also invited to lunch with Mr. Shi Jun Chen, Director for the Office of the Mayor of the City of Zhoushan, to discuss a possible clean-energy-city relationship with Honolulu. Zhoushan is the main island in the strategic archipelago south of Shanghai that is the easternmost point of China in the East China Sea, and has been designated for national strategic development in the coming years by the Government of China. Zhoushan was a fishing village of 6,000 people only 15 years ago, and today is a bustling international city of 1.5 million.
While Pat continued around the world, I capped off my trip to China with a meeting in Tokyo with principals of Shimizu Corp., a pre-eminent architectural engineering firm in Japan. Shimizu has been developing engineering plans to build “Green Floating Islands” in the ocean that are 3,000 meters (2 miles) in diameter and can support 30,000 residents each as entirely clean energy, self-sustaining and carbon-negative ecosystems. Shimizu showed keen interest in Blue Revolution Hawaii’s goal to have the world’s first floating island built in Hawaiian waters as a living laboratory for ocean research.While in Tokyo I also attended the EcoBalance 2010 conference in November at the Miraikan Science Museum, delivering presentations on ocean resources developments and clean energy incentives in Hawaii. Both topics were unique in a conference that included over 200 presentations by researchers and sustainability development experts from 48 countries worldwide.
Here in Hawaii Lockheed Martin is proceeding with its plan to construct a 5 MW OTEC pilot plant in partnership with the State of Hawaii and the Taiwan Industrial Technology Research Institute starting next year in 2011. The pilot plant will enable the collection of operational and ocean impact monitoring data for optimization of design and operation of large-scale OTEC facilities in the ocean. Hawaii has the largest ocean exclusive economic zone (EEZ) of all states in the U.S. With successful pilot plant operation, Lockheed Martin plans, in Phase 2, to build a 100 MW OTEC-powered platform to generate baseload electricity and freshwater for Honolulu. The Lockheed Martin team is partnering with Makai Ocean Engineering and other Hawaii companies and the University of Hawaii.
A proposal for growing yellowfin and bigeye tuna in large, autonomous, OTEC-powered “Oceanspheres” in an ocean lease zone 3 miles off Kawaihae Harbor of the Island of Hawaii has been put forward by Hawaii Oceanic Technology Inc., Honolulu, Hawaii. The company received approval of its final Environmental Impact Statement in October 2009 and recently completed licensing permitting for operations. Such next generation fisheries in deep ocean waters hold great promise for food sustainability and security, as well as positive health, environmental and socioeconomic benefits.Now that Neil Abercrombie has been sworn in as the new Governor of Hawaii, we hope he will make it a top priority of his Administration to have Hawaii take a leading role in the Blue Revolution. As U.S. congressman, Abercrombie has been a strong supporter of funding for OTEC research and NELHA in Hawaii. Our BRH goals for the new State Administration in 2011 include:
(1) making a proclamation of Hawaii’s taking a leading role in ocean resources development on World Ocean Day in June 2011;
(2) enabling the State’s Department of Business, Economic Development & Tourism (DBEDT) to support ocean resources development as a Strategic Industry and draft a strategic plan for ocean resources development in the State of Hawaii;
(3) retitling the State’s Department of Land & Natural Resources as the “Department of Land, Ocean & Natural Resources” (DLONR), and providing the Ocean division with staffing and technical expertise for regulation of ocean resources development in state jurisdictional waters; and
(4) inviting and facilitating external investment and research exchange relationships with global companies and organizations worldwide for ocean resources development in Hawaii.
BLUE REVOLUTION HAWAII
Located in the middle of the Pacific Ocean, Hawaii today is 90% dependent for its energy needs on imported fossil fuels, and 85% dependent on shipped-in foods. The Blue Revolution Hawaii (BRH) Team believes that the ocean surrounding Hawaii, jurisdictionally constituting the largest exclusive economic zone of any state in the U.S., can be developed as our ultimate sustainable resource to provide energy, food, and other marine products for Hawaii's needs in economically sound, ecologically protective, and environmentally beneficial ways. Our initial focus will be on public education to promote objective (science-based) consideration of ocean resources development in harmony with the environment. Ultimately, ocean resources could be developed from new archipelagoes of OTEC-powered zero-emission floating islands sustainably producing a wide range of clean-and-green marine co-products: electricity, freshwater, biomethanol, hydrogen, ammonia, seafood, marine chemicals and other commodities, while serving as floating extensions of cities and marine parks in the Hawaii ocean EEZ. Blogsite: http://BlueRevolutionHawaii.blogspot.com/
Monday, November 15, 2010
IP-BASED TECH-TRANSFER BY U.S. TECHNOLOGY COMPANIES TO CHINA
I just returned from a month-long trip to China touring with a U.S. law delegation under the Eisenhower Citizen Ambassador Program led by Deborah Enix-Ross of the law firm of Debevoise & Plimpton with 29 participants. We visited Chinese law firms, law schools, seminar forums, and bar associations in Beijing, Xi’an and Shanghai (photo of our law tour delegation which held a joint U.S.-Sino law seminar with the Lixiaohua Law Firm). Including my trip extensions to Hong Kong (SAR) and Shenzhen, China, I visited 10 Chinese law firms in 5 major cities. Meeting Chinese law professionals and seeing the economic development in cities first-hand since my last visit to China 20 years ago, I came away thoroughly impressed with China’s accomplishments to date and with its dynamism and optimism for the future. We Americans need to reset our held-myths about China from 20 years ago and realize that it is a completely different country today. 
While China’s Government is asserting its increasing strength and elevating stature in economic and foreign policy, it is transforming its domestic institutions to a society based on rule-of-law (under civil code similar to Europe) and free-market principles (tempered by practical controls over social order). China’s economic development in the past 15 years has lifted an estimated 300 million people of its current 1.6 billion population out of poverty, and managed a transition from a predominantly agrarian society to one where 50% of its people now live and work in cities. Whole cities populated in the millions have been built new. China’s goal over the next 15 years is to continue its transformation to a middle-class society, while it works toward a new social order in the world based on sustainable use of resources for needed economic growth. Its biggest challenge will be to continue to adapt its internal political system commensurate with its economic development.
One area providing a useful example of China’s development is in technology and its transformation to a technological society. In preparing for my trip, I came across an article entitled “Five Reasons China Will Rule Tech”, by Ray Kwong, published in Forbes Online, July 13, 2010. He notes that China's leadership places a high priority on educating its upcoming generations in science and engineering. Most of its Politbureau members including President Hu Jintao have engineering degrees. Its science and engineering pool is vast – in 2005 China awarded 351,500 science and engineering degrees, compared to 137,500 in the U.S. It now emphasizes an “indigenous innovation policy” to promote development of Chinese-origin technology while at the same time encouraging transfer of foreign technology and high-level management services to China.
U.S. innovation companies are typically small-to-medium sized enterprises (SMEs) lightly capitalized with venture capital. Such SME companies will find it increasingly difficult to compete head-to-head with Chinese companies. As an example, I came across an article entitled “Chinese Solar Giants Cast Shadow on U.S.”, by Todd Woody, Fremont, CA, published in the International Herald Tribune, Business Asia with Reuters, October 14, 2010. The article notes that in competing with Chinese companies, American technology companies are struggling to find niches where they can survive. Silicon Valley start-ups in Clean Energy like Solyndra, Nanosolar, and MiaSole are finding it difficult to make headway in world markets and even in the U.S. against low-cost Chinese manufacturers supported by government investments and favorable trade policies. The article quotes Conrad Burke, CEO of Innovalight, saying, “Innovation will be the heart of the U.S. [survival] strategy, and although it might not create the same scale, we are exporting well-protected technology to China and creating well-paying jobs here”.
In other words, American companies are finding that they can survive by transferring their innovation technology to Chinese companies to manufacture products at China’s low costs. If a joint venture is formed through Hong Kong or Singapore, which have strong rule-of-law systems, the U.S. company can provide licensing of reserved IP rights in China and technology and innovation expertise to optimize products for marketing in China, and earn license royalties or a revenue share of sales in China. The U.S. company can then import the low-cost Chinese-supplied products back into the U.S. and other markets where it retains IP rights for profitable sales of its own.
As outlined in my November 2009 blog article, U.S. technology companies can advantageously transfer or license IP (patent) rights as primary assets in IP-based tech-transfer transactions with Chinese companies according to the following model:
1. U.S. researcher invents a new technology, and applies for IP rights.
2. U.S. innovation company acquires inventor’s IP rights, develops and proves the feasibility of the new technology, and files for patent rights in the U.S., China, and other countries.
3. The U.S. company transfers or licenses the Chinese patent rights to a joint venture company which engineers the product and manufactures it for marketing and sale in China.
4. The joint venture company in China establishes the product at efficient manufacturing costs through domestic sales, then supplies the product at low cost to the U.S. company for import.
5. The U.S. company makes profitable sales in the U.S. and foreign markets where it owns strong IP protection rights.
The typical small-to-medium sized U.S. technology company has little leverage or sufficient resources to enforce Chinese patent rights against large companies in China anyway, so that a transfer to the Chinese joint venture partner is the best use of the China IP rights and provides an incentive to the Chinese joint venture partner to invest in engineering the product and gearing up for manufacture and sales in China. The U.S. company can control export of the low-cost product from China for sale in the U.S. and other countries such as Japan, Korea, Australia, Canada, and/or Europe by relying on strong IP rights there.
In a typical patent filing strategy, the U.S. company should file a home country (U.S.) patent application as soon as the invention has been completed, then file an international (administrative) filing under the Patent Cooperation Treaty (PCT) within one year in order to claim the U.S. priority date and extend the treaty deadline for foreign filings for a further 18 months while also receiving an early international search and patentability report. The U.S. company must then elect in which countries to file national-stage patent filings from PCT by the 30-month deadline (from the U.S. filing date), which would include China and any other foreign countries of strong commercial interest. The USPTO grants an export license for foreign patent filings automatically within 6 months of the U.S. filing date, unless the application is sequestered within that time for national security purposes. The U.S. company may need to apply for an export license to transfer related technology (such as software and engineering data) if they contain technical subject matter that goes beyond the scope of the patent application disclosure.
The challenge for a small-to-medium sized U.S. technology company in this IP-based tech transfer model will be finding a trusted Chinese joint venture partner and making a compelling business case why the product is likely to be profitable to them in domestic China sales as well as for export for foreign sales. Deal-making in China is still strongly dependent on personal relationships (“guanxi”), so an introduction to persons with decision-making authority in the target Chinese company will depend on going through well-connected intermediaries. In technology deals, such intermediaries may be bilingual business consultants and/or attorneys handling corporate and/or IP matters for the target Chinese company. Chinese companies have access to plenty of capital and no longer prefer to structure cross-border deals based on foreign investment. However, they still need to justify their access to domestic investment capital based on projecting a strong likelihood of profitable domestic sales.
While China’s Government is asserting its increasing strength and elevating stature in economic and foreign policy, it is transforming its domestic institutions to a society based on rule-of-law (under civil code similar to Europe) and free-market principles (tempered by practical controls over social order). China’s economic development in the past 15 years has lifted an estimated 300 million people of its current 1.6 billion population out of poverty, and managed a transition from a predominantly agrarian society to one where 50% of its people now live and work in cities. Whole cities populated in the millions have been built new. China’s goal over the next 15 years is to continue its transformation to a middle-class society, while it works toward a new social order in the world based on sustainable use of resources for needed economic growth. Its biggest challenge will be to continue to adapt its internal political system commensurate with its economic development.One area providing a useful example of China’s development is in technology and its transformation to a technological society. In preparing for my trip, I came across an article entitled “Five Reasons China Will Rule Tech”, by Ray Kwong, published in Forbes Online, July 13, 2010. He notes that China's leadership places a high priority on educating its upcoming generations in science and engineering. Most of its Politbureau members including President Hu Jintao have engineering degrees. Its science and engineering pool is vast – in 2005 China awarded 351,500 science and engineering degrees, compared to 137,500 in the U.S. It now emphasizes an “indigenous innovation policy” to promote development of Chinese-origin technology while at the same time encouraging transfer of foreign technology and high-level management services to China.
U.S. innovation companies are typically small-to-medium sized enterprises (SMEs) lightly capitalized with venture capital. Such SME companies will find it increasingly difficult to compete head-to-head with Chinese companies. As an example, I came across an article entitled “Chinese Solar Giants Cast Shadow on U.S.”, by Todd Woody, Fremont, CA, published in the International Herald Tribune, Business Asia with Reuters, October 14, 2010. The article notes that in competing with Chinese companies, American technology companies are struggling to find niches where they can survive. Silicon Valley start-ups in Clean Energy like Solyndra, Nanosolar, and MiaSole are finding it difficult to make headway in world markets and even in the U.S. against low-cost Chinese manufacturers supported by government investments and favorable trade policies. The article quotes Conrad Burke, CEO of Innovalight, saying, “Innovation will be the heart of the U.S. [survival] strategy, and although it might not create the same scale, we are exporting well-protected technology to China and creating well-paying jobs here”.
In other words, American companies are finding that they can survive by transferring their innovation technology to Chinese companies to manufacture products at China’s low costs. If a joint venture is formed through Hong Kong or Singapore, which have strong rule-of-law systems, the U.S. company can provide licensing of reserved IP rights in China and technology and innovation expertise to optimize products for marketing in China, and earn license royalties or a revenue share of sales in China. The U.S. company can then import the low-cost Chinese-supplied products back into the U.S. and other markets where it retains IP rights for profitable sales of its own.
As outlined in my November 2009 blog article, U.S. technology companies can advantageously transfer or license IP (patent) rights as primary assets in IP-based tech-transfer transactions with Chinese companies according to the following model:
1. U.S. researcher invents a new technology, and applies for IP rights.
2. U.S. innovation company acquires inventor’s IP rights, develops and proves the feasibility of the new technology, and files for patent rights in the U.S., China, and other countries.
3. The U.S. company transfers or licenses the Chinese patent rights to a joint venture company which engineers the product and manufactures it for marketing and sale in China.
4. The joint venture company in China establishes the product at efficient manufacturing costs through domestic sales, then supplies the product at low cost to the U.S. company for import.
5. The U.S. company makes profitable sales in the U.S. and foreign markets where it owns strong IP protection rights.
The typical small-to-medium sized U.S. technology company has little leverage or sufficient resources to enforce Chinese patent rights against large companies in China anyway, so that a transfer to the Chinese joint venture partner is the best use of the China IP rights and provides an incentive to the Chinese joint venture partner to invest in engineering the product and gearing up for manufacture and sales in China. The U.S. company can control export of the low-cost product from China for sale in the U.S. and other countries such as Japan, Korea, Australia, Canada, and/or Europe by relying on strong IP rights there.
In a typical patent filing strategy, the U.S. company should file a home country (U.S.) patent application as soon as the invention has been completed, then file an international (administrative) filing under the Patent Cooperation Treaty (PCT) within one year in order to claim the U.S. priority date and extend the treaty deadline for foreign filings for a further 18 months while also receiving an early international search and patentability report. The U.S. company must then elect in which countries to file national-stage patent filings from PCT by the 30-month deadline (from the U.S. filing date), which would include China and any other foreign countries of strong commercial interest. The USPTO grants an export license for foreign patent filings automatically within 6 months of the U.S. filing date, unless the application is sequestered within that time for national security purposes. The U.S. company may need to apply for an export license to transfer related technology (such as software and engineering data) if they contain technical subject matter that goes beyond the scope of the patent application disclosure.
The challenge for a small-to-medium sized U.S. technology company in this IP-based tech transfer model will be finding a trusted Chinese joint venture partner and making a compelling business case why the product is likely to be profitable to them in domestic China sales as well as for export for foreign sales. Deal-making in China is still strongly dependent on personal relationships (“guanxi”), so an introduction to persons with decision-making authority in the target Chinese company will depend on going through well-connected intermediaries. In technology deals, such intermediaries may be bilingual business consultants and/or attorneys handling corporate and/or IP matters for the target Chinese company. Chinese companies have access to plenty of capital and no longer prefer to structure cross-border deals based on foreign investment. However, they still need to justify their access to domestic investment capital based on projecting a strong likelihood of profitable domestic sales.
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