Category

International IP

Oct 01

India’s Supreme Court: Enforce Patents or Provide Generic Drugs for the Poor?

By Blog, International Business, International IP
“A child suffering from cancer in New Delhi, India. This week, India’s Supreme Court hears arguments in a case that will affect how many poor people can afford cancer drugs. Novartis is defending a patent on its cancer medication, Gleevec.”- American Public Media’s Marketplace.org (Photo by Sajjad Hussain/AFP/Getty Images)

According to Reuters, Swiss drug maker Novartis is trying to secure patent protection for one of its drugs, Glivec, in India. Its taken the case up to India’s Supreme Court because patent protection was denied protection in the lower courts which found that the drug wasn’t a new molecule, but rather an amended version of a known compound.

According to America Public Media’s Marketplace, Novartis first developed Glivec in the 1990s. Since then, it has modified its drug, which is why Novartis believes it deserves a patent. Ranjit Shahani, a company president, says “Glivec is widely recognized as a medical breakthrough and has been granted a patent in more than 40 countries, including China, Russia, and Taiwan.” However, India’s courts denied the patent in 2006 because its not really new under Indian law, which prevents pharmaceutical companies from from continually renewing patents on existing drugs by making slight changes to original medications.

However, what’s at stake isn’t really about getting Indian patent protection for Glivec in India at all. Reuters explains that India only accounts for a small fraction of Novartis’ total global sales. And Glivec is only used to treat chronic myeloid leukaemia and some gastrointestinal cancers. The issue is much bigger than that. Its really all about the global production of generic drugs.

India is the world’s largest exporter of cheap generic drugs. In fact, India is considered the pharmacy of developing world. Leena Menghaney, who is with the aid organization Doctors Without Borders, told Marketplace that generic versions of Glivec in India cost 96 percent less than in the United States, where the drug is patented and costs $70,000 for a year’s supply. Megnhaney explains, “If Novartis wins, the generic industry will possibly move back from producing some of the drugs they produce today. So this will have a chilling effect on generic competition.”

Novartis and other large drug makers are concerned that a ruling against patent protection would cement India’s status as a country in which patents are extremely hard to protect. Critics of big Western drug makers say that a win for Novartis would jeopardize the supply of cheap generic drugs to hundreds of millions of poor people around the world.

So one the one hand, there are millions of poor people who can’t afford to pay for drugs that are protected by patents. On the other, pharmaceutical companies are fighting for the exclusive rights to produce the drugs that they invented, in which they have invested countless years and resources.

Sep 14

Members of Counterfeit Nike Sneaker Ring Face Up to 5 Years in Prison and $250,000 Fine

By Customs IP Enforcement, Export, Import, Intellectual Property, International Business, International IP, News

Registered Trademark of Nike

Five individuals have pleaded guilty to conspiring to import misclassified merchandise. Each faces up to five years in federal prison and a $250,000 fine. This case is being investigated by U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI).

“The trademark laws in the United States were created to protect the investment of American manufacturers such as Nike as well as consumers,” said U.S. Attorney William J. Hochul Jr., Western District of New York. “These laws are designed to create a level playing field for businesses and protect consumers who might unwittingly purchase inferior counterfeit goods. Our office will continue to aggressively enforce customs laws for the benefit of American businesses and those who purchase their products.”

“Selling counterfeit goods is stealing,” said James C. Spero, special agent in charge of HSI Buffalo. “HSI is committed to ensuring the legitimate copyright holders are protected from individuals who are only motivated by greed. People and organizations which produce and sell counterfeit products undermine the U.S. economy; create inferior and sometimes dangerous products; and jeopardize public safety.”

Xiao Cheng Lin, 50, and his wife, Ling Zhen Hu, 51, both of New York, pleaded guilty before U.S. District Judge Richard J. Arcara to conspiring to import misclassified merchandise. Hu, a native of China, worked for an individual who imported thousands of pairs of sneakers from China that bore the Nike “swoosh” logo and Nike labeling, but were not genuine Nike sneakers. Hu then negotiated the sale of large quantities of the mislabeled sneakers to Malik Bazzi, 44, of Montreal, who then sold them to customers throughout the United States — including in Buffalo — via his warehouses in Manhattan and Brooklyn. Bazzi is currently scheduled to be sentenced Feb. 1, 2013. Hu admitted that she negotiated the sale of 7,500 pairs of sneakers to Bazzi.

Lin, also a native of China, worked with his wife, delivering the 7,500 pairs of sneakers to Bazzi. The HSI investigation revealed that Bazzi’s customers then sold the counterfeit Nike sneakers on the street and in retail stores to customers for about half the price of genuine Nike sneakers.

As part of their plea agreements, both Lin and Hu agreed to abandon any claim to more than $600,000 and dozens of pairs of counterfeit sneakers seized from their New York residence following their 2007 arrest.

The defendants were arrested along with 21 others. To date, 20 of the defendants have been convicted.

On Sept. 5, 2012, LaKeith Fowler, 32, of Dallas, pleaded guilty before Judge Arcara to conspiring to traffic in counterfeit sneakers. Fowler, one of Bazzi’s customers, purchased and sold approximately 12,000 pairs of counterfeit Nike sneakers he obtained from Bazzi from April to September 2007. Fowler sold the sneakers in a retail store he owned in the Dallas-area. As part of his plea agreement, Fowler agreed to forfeit two bank accounts to the government which contain over $44,000 in deposits. The accounts were used to conduct counterfeit sneaker transactions.

On Sept. 7, 2012, Davion Briant, 37, of Milwaukee, also pleaded guilty before Judge Arcara to conspiring to traffic in counterfeit sneakers. Briant, another of Bazzi’s customers, purchased and sold approximately 4,500 pairs of counterfeit Nike sneakers he obtained from Bazzi from April to September 2007. Briant owned a retail store in the Milwaukee-area where he sold the counterfeit sneakers.

On Sept. 10, 2012, Hussien Sara, 30, of New York, pleaded guilty before Judge Arcara to conspiring to traffic in counterfeit sneakers. Sara worked in Bazzi’s warehouses where, on behalf of Bazzi, he took delivery of over 13,000 pairs of counterfeit sneakers from several suppliers, including Hu and Lin. In addition, Sara assisted in packaging the sneakers for shipment to Bazzi’s customers located throughout the United States.

Lin and Hu will be sentenced Jan. 24, 2013; Fowler Dec. 14, 2012; Briant Jan. 7, 2013; and Sara Jan. 11, 2013. All will be sentenced by Judge Arcara in Buffalo.

SOURCE: ICE

Aug 24

Customs seizes $18 million in Counterfeit Contact Lenses and Merchandise

By Blog, Customs IP Enforcement, International IP

Special agents with U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) and officers from the Federal Food and Drug Administration (FDA), the Puerto Rico Police Department (PRPD), the San Juan Police Department (SJPD) and the Puerto Rico Department of Health’s Office of Investigations seized more than $18 million in counterfeit contact lenses and merchandise during the execution of several search warrants in eight different municipalities of Puerto Rico.

On Aug. 21, HSI special agents and partner law enforcement officers worked in teams to execute 17 federal search warrants at stores in the municipalities of San Juan, Caguas, Añasco, Bayamon, Ponce, Moca, Isabela and Naranjito, Puerto Rico. They seized 4,000 counterfeit Fresh Look contact lenses by Novartis, with an estimated manufacturer’s retail price (MSRP) of $200,000, along with 200,000 pieces of counterfeit merchandise from companies like Coach, Gucci, Ray Ban, Michael Kors, Rolex, Bulgari, Hublot, Nautica, Tous, Tiffany & Co., and Nike, among others. HSI special agents seized 25,000 counterfeit watches with an approximate MSRP of more than $3 million and 200 pairs of sneakers with an approximate MSRP of $32,000. The total MSRP of seized merchandise was approximately $18 million.

“The illegal importation and sale of counterfeit goods is a significant problem that affects our economy, impacts American jobs and innovation, puts the public’s health and safety at risk and at times threatens our national security,” said Angel Melendez, acting special agent in charge for HSI San Juan. “Consumers should know that if they buy pirated and unlicensed products, they are hurting legitimate businesses and they may also be facilitating criminal activity.”

SOURCE:  US ICE/HSI

Aug 04

PRACTICAL TIP: Top ROI for Your Legal Dollars

By Blog, Customs IP Enforcement, Export, FCPA, Foreign Trade Zones (FTZ), Grab Bag, Import, Intellectual Property, International Business, International IP, Internet / eCommerce, ITAR, News

Based on our experience, some of the best uses of resources on legal advice and assistance for businesses and entrepreneurs (from a “bang for your buck” perspective) are:

  • Succession Planning. This includes buy-sell and similar provisions in company documents to deal with death, divorces, and other departures of co-owners, and also includes an updated estate plan such as a will and advance directives to ensure your legacy.

The benefits one can obtain from these legal mechanisms and protections, which generally cost less than $2,000, can pay for themselves many times over.

 

Jul 12

Jim Chester Featured in July 2012 Issue of Texas Bar Journal

By Intellectual Property, International Business, International IP, News

Jim Chester, founding member of Dallas-based global business & technology law firm CHESTER pllc, was featured in the July 2012 issue of the Texas Bar Journal.  A recognized expert in international business and intellectual property law, Chester was asked to write an article discussing, “Protecting Intellectual Property in International Markets.”  In the article, he discusses the need for IP protection while suggesting actions to take when conducting business on a global scale.   The article is available for download from the Texas Bar website.

Advising clients regarding trademark, copyright, trade secret protection, licensing and enforcement in the U.S. and abroad, Chester represents clients before the U.S. Patent and Trademark Office (USPTO) and the U.S. Library of Congress (Copyright Office).  He also counsels companies on trade regulations involving customs, import and export laws which include International Traffic in Arms Regulations (ITAR) and the Foreign Corrupt Practices Act (FCPA).  Chester routinely represents clients before U.S. Customs & Border Protection U.S. Department of Commerce, U.S. Department of Defense Trade Controls, the Office of Foreign Asset Controls, the U.S. International Trade Administration, and other state, Federal and foreign governing agencies.  Chester is a licensed U.S. Customs Broker, and is admitted to practice law in Texas and Washington, D.C.

“For anyone conducting business outside of the U.S., the first stop in the protection process is to properly identify all IP assets,” Chester advises.  “Since all businesses make use of names, brands and logos (trademarks and service marks), designs, websites and software (copyright), inventions, ideas, and processes (patent and trade secrets) in some form, IP protection is essential when doing business outside the U.S.”

“Jim has a unique legal skill set combining international law with intellectual property expertise,” said Darin M. Klemchuk, a Dallas IP attorney and senior partner of Klemchuk Kubasta LLP.  “He has advised clients on business deals involving almost 100 countries, and has coordinated with foreign counsel on legal projects around the world.  Jim has also served as legal advisor to foreign companies doing business in the U.S.”

To be an effective international business and technology attorney, Chester has many years of experience in handling a broad range of domestic business matters, including entity formations, ecommerce, agreements, technology transactions, acquisitions, and other legal issues commonly faced by businesses. In addition to his work in international and IP law, Chester has been an adjunct professor of law at Baylor University Law School for more than ten years, teaching courses on International Trade Law and International Business Transactions.  He also served as an adjunct professor of Business Law at the University of Dallas for four years.

 

 

About CHESTER pllc

CHESTER pllc is a Dallas, Texas law firm providing mission-critical legal services to innovation-based companies doing business in the US, around the world, and on the web.  Its mission (and passion) is helping entrepreneurs and emerging companies solve problems and protect their interests. CHESTER pllc delivers value by providing business-savvy, cost-effective solutions to legal challenges.  The firm offers a wide array of business legal solutions, such as business entity formation (LLCs, corporations, etc.), trademarks and other intellectual property, technology transactions, contracts, ecommerce and dispute resolution.  Additional information about the firm and its attorneys may be found at www.chester-law.com

May 12

Over $1.5 Million Seized from Online Sale of Counterfeit Sports Apparel manufactured in China

By Customs IP Enforcement, Intellectual Property, International Business, International IP

The Department of Justice seized more than $1.5 million in proceeds from the distribution of counterfeit sports apparel and jerseys, following an investigation into the sale of counterfeit goods on commercial websites conducted by the National Intellectual Property Rights Coordination Center (IPR Center), which is led by U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI).

The developments are the latest result of Operation In Our Sites, a law enforcement initiative targeting online commercial intellectual property crime announced by HSI in June 2010. Operation In Our Sites targeted online retailers of a diverse array of counterfeit goods, including sports equipment, shoes, handbags, athletic apparel, sunglasses and DVD boxed sets. To date, 761 domain names of websites used in the sale and distribution of counterfeit goods and illegal copyrighted works have been seized as a result of Operation In Our Sites.

“ICE will continue to target those who traffic in counterfeit goods by attacking the financial profits of counterfeiting sites and shutting them down,” said ICE Director Morton. “Operation In Our Sites and the tireless work of the National Intellectual Property Rights Coordination Center protect consumers from fraud on the Internet and combat intellectual property theft which exacts a toll on our economy and industries.”

Last month, more than $896,000 in proceeds from the sale of counterfeit sports apparel on commercial websites was seized as part of Operation In Our Sites. According to court documents, investigation by federal law enforcement officers revealed that subjects whose domain names had been seized in a November 2010 In Our Sites operation continued to sell counterfeit goods using new domain names. In particular, the individuals, based in China, sold counterfeit professional and collegiate sports apparel, primarily counterfeit sports jerseys. Law enforcement officers made numerous undercover purchases from the websites associated with the new domain names. After the goods were confirmed to be counterfeit or infringing, seizure warrants for three domain names used to sell the infringing goods were obtained from a U.S. magistrate judge in U.S. District Court for the District of Columbia.

The individuals conducted sales and processed payments for the counterfeit goods using money service business accounts and then wired their proceeds to bank accounts held at a Chinese bank, the court documents state.

Pursuant to warrants issued by a U.S. district judge, law enforcement officers seized $1,455,438.72 in proceeds that had been transferred from the money service business accounts to various bank accounts in China. The funds were seized from correspondent, or interbank, accounts held by the Chinese bank in the United States. Pursuant to additional seizure warrants issued by a U.S. magistrate judge, law enforcement officers also seized $94,730.12 in funds remaining in six money service business accounts used by the subjects.

“The seizures … are another step forward in our efforts to disrupt and disable those engaged in intellectual property crime,” said Assistant Attorney General Lanny A. Breuer. “By seizing the domain names and profits of online counterfeit goods operations, we are protecting consumers and sending a message to criminals that we will use every tool at our disposal to stop them.”

“Within a matter of weeks, this law enforcement operation has seized more than $2.4 million in proceeds from individuals overseas who are preying on the American economy and consumers with their sales of counterfeit goods,” said U.S. Attorney Ronald C. Machen Jr., District of Columbia. “We will continue to work with our law enforcement partners to target these unscrupulous operators where it hurts them the most – at the bank.”

May 03

Over $47 million in Counterfeit Goods Seized at Flea Market

By Customs IP Enforcement, Import, Intellectual Property, International IP

A very productive enforcement action at the end of April at the Patapsco Flea Market in Baltimore conducted by special agents with U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) resulted in the agency’s largest counterfeit seizure at a flea market.

On Sunday, April 22, HSI special agents executed a federal search warrant at the Patapsco Flea Market at 1400 W. Patapsco Avenue in Baltimore as part of an ongoing criminal investigation. The enforcement operation was based on specific information developed during a two and a half year long investigation by HSI Baltimore involving violations of intellectual property rights law. Over the course of numerous days, HSI special agents, with assistance from law enforcement and industry partners, seized nearly 220,000 counterfeit items including clothing, shoes, jewelry, handbags, DVDs, CDs, perfume, make-up and other personal care items. If those items were legitimate, the total manufacturer’s suggested retail price would be approximately $47.3 million.

The HSI Baltimore investigation identified numerous vendors selling counterfeit goods with brand names such as M∙A∙C, Louis Vuitton, Gucci, Coach, Kate Spade, NFL, Nike, Dolce & Gabbana, Dooney & Bourke, Ralph Lauren Polo, Lacoste, North Face, Rocawear, Ed Hardy, Chanel, Tiffany, Timberland, Uggs, Sony, Apple, Coogi, Black Label, Under Armour and Affliction, among others. The multi-day operation also netted the seizure of approximately $1.5 million in suspected criminal proceeds.

“The illegal importation and sale of counterfeit goods is a significant problem that affects our economy, impacts American jobs and innovation, puts the public’s health and safety at risk and at times threatens our national security,” said William Winter, special agent in charge for HSI Baltimore. “Consumers should know that if they buy pirated and unlicensed products, they are hurting legitimate businesses and they may also be facilitating criminal activity.”

The following law enforcement and industry partners also participated in the operation: Maryland State Police, Baltimore Police Department, Under Armour, Estee Lauder, the Recording Industry Association of America (RIAA) and the Motion Picture Association of America (MPAA). Blazer Investigations, representing numerous trademarked brand names, was also on site assisting with the identification of counterfeit goods.

Apr 27

Nearly $1 Million Worth of Counterfeit Movies and Music Seized

By Customs IP Enforcement, Intellectual Property, International IP

Two Mexican nationals made their initial appearance in federal court this week on charges of trafficking in counterfeit goods after U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) agents executed a search warrant at a rural Fresno (California)-area home, seizing more than 70,000 pirated copies of music and movies.

Alberto Campos-Limon, 24, and Jose Jeronimo-Jimenez, 32, both of Fresno, were taken into custody by Fresno HSI agents. They are charged in a criminal complaint with conspiracy; copyright infringement; and trafficking in counterfeit labels. The illegal activities allegedly occurred between Feb. 28 and April 24. Each offense carries a maximum penalty of up to five years in prison.

A third suspect, Arnoldo Chavez-Mendoza, 50, a Mexican national who currently resides in Tulare, was arrested on state charges of copyright infringement after agents conducting the enforcement action observed him purchasing several hundred audio CDs from the two defendants.

The suspects were taken into custody at a rural Fresno-area residence where investigators discovered the bulk of the counterfeit music and movie disks. During a search of the home, investigators also found a variety of equipment commonly used to mass produce DVDs and CDs.

“Commercial piracy and product counterfeiting undermine the U.S. economy, rob Americans of jobs, stifle American innovation and promote other types of crime,” said Clark Settles, special agent in charge who oversees HSI Fresno. “Intellectual property theft amounts to economic sabotage, which is why HSI will continue to aggressively pursue product counterfeiters and those who sell counterfeit products.”

This enforcement action is the culmination of a probe that began in February. According to the criminal complaint in the case, during the ensuing investigation agents made multiple undercover purchases of counterfeit DVDS, including films such as “Safe House,” “In Time,” “Haywire” and “Red Tails.” Among the titles seized Tuesday at the residence were numerous first run movies, including “Hunger Games” and “American Reunion.” All told, agents have seized more than 70,000 counterfeit DVDs and CDs in connection with the investigation. Authorities estimate the retail value of those disks at more than $900,000.

HSI received substantial assistance with the investigation from the Fresno County Sheriff’s Office, the Motion Picture Association of America and the Recording Industry Association of America (RIAA).

“The United States government has made intellectual property protection a priority,” said Dallas international trade and intellectual property attorney Jim Chester.  “It seems as if every week we see a new seizure of counterfeiting imports.  These efforts are helpful and worthwhile, but U.S. officials and law enforcement can only do so much.  Seizure of trademark and copyright infringing imports will hardly make a dent in the global piracy of intellecual property rights.”

SOURCE:  DHS

Apr 19

ICE Seizes $4 Million Worth of Counterfeit Athletic Apparel

By Customs IP Enforcement, Intellectual Property, International IP

A massive cache of counterfeit athletic apparel was recently found in a Sacramento, California warehouse.

Agents with U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) are currently working to inventory the contents of a warehouse on the city’s southeast side that yielded one of the largest single seizures of counterfeit apparel ever made in the area.

HSI agents executed a search warrant at the building on Berry Avenue Tuesday morning as part of a long-term investigation. Inside, investigators found multiple rows of shelving 40 feet high and more than 400 feet long stacked with apparel. Some of the merchandise was packed in boxes, other items were individually wrapped in plastic.

Agents still do not have a final count on the total number of items, but they say it will run into the tens of thousands. The bulk of the clothing was athletic apparel bearing a counterfeit Adidas trademark, including sports jerseys, shorts and shoes. In addition to the apparel, agents also discovered an array of counterfeit sports memorabilia, such as commemorative clocks and soccer balls.

“Commercial piracy and product counterfeiting undermine the U.S. economy, rob Americans of jobs, stifle American innovation and promote other types of crime,” said Dan Lane, assistant special agent in charge for HSI Sacramento. “Intellectual property theft amounts to economic sabotage, which is why HSI will continue to aggressively pursue product counterfeiters and those who sell counterfeit products.”

An investigative consultant who works with Adidas on issues involving intellectual property violations estimates if the seized merchandise had been genuine it would have retailed for more than $4 million.

HSI officials advise the probe is ongoing and no arrests have yet been made. HSI is receiving substantial assistance with the investigation from U.S. Customs and Border Protection (CBP), including CBP personnel with specialized expertise in identifying counterfeit merchandise who were on site for the execution of Tuesday’s search warrant. The Sacramento Police Department also provided support for the enforcement action.

It is believed the seized merchandise was destined for distribution to retail outlets throughout the United States. Once the items are inventoried, they will be transported to a secure facility for storage while the case is ongoing.

Apr 18

U.S IP-intensive Industry Worth $5 Trillion, 40 Million Jobs to US Economy

By Intellectual Property, International IP, Technology Transactions

The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: Industries in Focus,” which finds that intellectual property (IP)-intensive industries support at least 40 million jobs and contribute more than $5 trillion dollars to, or 34.8 percent of, U.S. gross domestic product (GDP).

While IP is used in virtually every segment of the U.S. economy, the report identifies the 75 industries that use patent, copyright, or trademark protections most extensively. These “IP-intensive industries” are the source – directly or indirectly – of 40 million jobs. That’s more than a quarter of all the jobs in this country. Some of the most IP-intensive industries include: Computer and peripheral equipment, audio and video equipment manufacturing, newspaper and book publishers, Pharmaceutical and medicines, Semiconductor and other electronic components, and the Medical equipment space.

The report has several important findings, including:

• IP-intensive industries contributed $5.06 trillion to the U.S. economy or 34.8 percent of GDP in 2010.

• 40 million jobs, or 27.7 percent of all jobs, were directly or indirectly attributable to the most IP-intensive industries in 2010.

• Between 2010 and 2011, the economic recovery led to a 1.6 percent increase in direct employment in IP-intensive industries, faster than the 1.0 percent growth in non-IP-intensive industries.

• Merchandise exports of IP-intensive industries totaled $775 billion in 2010, accounting for 60.7 percent of total U.S. merchandise exports.

The full report can be found online at http://www.uspto.gov/news/publications/IP_Report_March_2012.pdf.

 

 

SOURCE:  USPTO / US Dept of Commerce