Protecting Intellectual Property in International Markets INTELLECTUAL PROPERTY

Companies face significant challenges in protecting and enforcing their intellectual property around the world, and when those challenges are not successfully addressed, the business consequences can be enormous. WilmerHale is specially positioned to help with these challenges, bringing to bear lawyers ranked as the best in the world from the patent and trademark bar, IP litigators and international trade, with global experience in navigating the complex legal, business and public policy aspects of international IP.

Our lawyers help companies and industries:

  • secure protection for their IP in jurisdictions around the world—for instance, preparing and prosecuting patents under the Patent Cooperative Treaty and working with seasoned patent lawyers in multiple jurisdictions;
  • resolve protection and enforcement disputes before administrative agencies and courts around the world—either directly (in those jurisdictions where we can appear) or in coordination with local counsel;
  • improve foreign government enforcement of IP—including by devising legal and public policy strategies, working directly with foreign governments (including in difficult developing markets like China and India) and enlisting US and EU government support and action;
  • contain the damage from infringement—including ensuring that infringing products do not enter the United States (through section 337 litigation before the US International Trade Commission).

Our lawyers also help shape the rules of international IP, helping companies, industries and governments:

  • shape the formulation and implementation of government policies, national legislation and international rules regarding IP—including counseling on implementation of the WTO Agreement on Trade-Related Intellectual Property Rights (TRIPS) and development of relevant national legislation;
  • ensure enforcement of governments’ international IP commitments—including under TRIPS.

In all of these areas, WilmerHale has substantial capabilities and experience, which we regularly bring together to handle cross-cutting, multi-disciplinary problems. Our core IP, IP litigation, and international trade practices are regularly ranked as the best or among the best in their class. With former senior policy makers from the United States and European Union governments, we have broad experience in negotiating practical solutions with governments, businesses, and other stakeholders. Additionally, we bring leading expertise and on-the-ground experience in key markets, including China, India and throughout Europe.

Companies face significant challenges in protecting and enforcing their intellectual property around the world, and when those challenges are not successfully addressed, the business consequences can be enormous. WilmerHale is specially positioned to help with these challenges, bringing to bear lawyers ranked as the best in the world from the patent and trademark bar, IP litigators and international trade, with global experience in navigating the complex legal, business and public policy aspects of international IP.

Our lawyers help companies and industries:

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Contacts

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Steinberg, Donald R.

Donald R. Steinberg

Chair, Intellectual Property Department

+1 617 526 6453 (t)

don.steinberg@wilmerhale.com

Love Ph.D., Jane M.

Jane M. Love, Ph.D.

Vice Chair, Intellectual Property Department

+1 212 937 7233 (t)

jane.love@wilmerhale.com

Haag, Joseph F.

Joseph F. Haag

Vice Chair, Intellectual Property Department

+1 650 858 6032 (t)

joseph.haag@wilmerhale.com

Experience

Protection and Enforcement

  • Each year, we file more than 1,000 patent applications and hundreds of trademark applications in foreign countries to protect companies’ intellectual property rights overseas
  • Advised a major US high-technology company on a successful government strategy and negotiation of an IP dispute with a "national champion” Chinese competitor
  • Negotiated and successfully litigated in China, with local counsel, on behalf of a US educational testing organization over infringement
  • Represented US pharmaceutical companies regarding data protection issues in China
  • Successfully used the EU’s Trade Barriers Regulation to help the French wine producers in Bordeaux protect their geographical indications
  • Advised a pharmaceutical federation in one of the EU Member States on supplementary protection certificates for pharmaceutical patents
  • Represent the European chemical industry in a case involving protection of so-called "regulatory data” before the European Court of First Instance
  • Represent major European consumer electronics company in its Trade Barriers Regulation procedure against compulsory patent licenses issued in Taiwan
  • Advised a major international wines and spirits company on the conflict between a relatively obscure geographical indication of origin and an internationally recognized trademark
  • Advised on access to proprietary test data in connection with a regulatory authorization procedure in EU Member States
  • Represented in its successful and precedent-setting competition law challenge before the European Court of Justice of a competitor’s refusal to give access to information on patterns of drugs prescribed by physicians for the German pharma industry

TRIPS and International Rules

  • Used the TRIPS Agreement to persuade foreign governments to be more zealous in their enforcement of intellectual property rights with regard to the counterfeit of recorded music and the abuse of registered trademarks for vodka
  • Advised US and EU pharmaceutical companies on the public health and access to patented medicines debate in the WTO
  • Advise a WTO Member in the China-Intellectual Property Rights WTO case
  • Advised US pharmaceutical company of consistency of French reimbursement system with WTO and other international rules
  • Advised governments on TRIPS-plus issues encountered in bilateral free trade agreements
  • Drafted the EU’s Guide for Industry on the Enforcement of the TRIPS Agreement
  • Advised the leading US business IP coalition during the negotiation of the WTO TRIPS Agreement

Other Policy Matters

  • Advised the Japanese Patent Office on EU intellectual property law
  • Advised on parallel trade in patented pharmaceuticals (for a coalition of European pharmaceutical companies)
  • Advise on pending US drug importation legislation, including patent and TRIPS issues
  • Advise on pending US legislation that would amend Section 337 "unfair imports” statute with respect to products made using a patented process
  • Advised a U.S. pharmaceutical company on strategies to enlist more robust US government advocacy on pricing issues in foreign markets

Section 337 (US International Trade Commission)

  • Successfully represented major US supplier of consumer electronic goods in obtaining dismissal of complaint alleging patent infringement
  • Successfully represented major US semiconductor producer in bringing complaint against imports of infringing wireless chips and products containing the chips
  • Successfully represented major European semiconductor producer in defense of two cases involving allegations of patent infringement by flash memory circuits
  • Successfully represented major European producer of semiconductor manufacturing equipment in case involving allegations of patent infringement by microlithographic machines
  • In two separate cases involving suppliers of consumer electronic goods, successfully represented complainants on appeal in overturning ITC findings of no violation of asserted patents
  • Successfully represented US supplier of semiconductor manufacturing materials in obtaining consent order against competing infringer of company’s patents
  • In all, successfully represented plaintiffs and defendants in almost two dozen Section 337 cases involving an array of technologies

Export Controls

  • Provided transaction and compliance advice to a European client concerning the use of US-origin encryption technology and software in various operations around the world