Protecting Intellectual Property in International Markets

Intellectual Property Litigation

Experience

  • Protection and Enforcement

    • Each year, we file around 1,000 patent applications and more than 1,500 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