Record III of the Visit to New York
(By You Yunting) From late of March, the author visited the US at the invitation of the US government in order to get a better understanding of how the US IPR system operates. On Monday of the second week there, the author visited Wiggin and Dana LLP and Pryor Cashman LLP, two New York law firms. The law offices visited on that day were all in New York’s central business district and had spacious offices, with luxurious decorations, and the view outside was all of beautiful river scenery or of the Apple Countdown. The following is the record of that day’s visit.
The four Wiggin and Dana lawyers that met us were patent attorneys, and all had professional backgrounds in the fields of medicine, chemistry, and biology. During the day’s talks, a Chinese representative raised a question: patent cases always involve complicated technology issues; how can a jury without education in either technology or law could decide the case? The answer was that in patent lawsuits, the most important part is cross-examination of witnesses. If the witness lies in court, even an ordinary person can see it. One of the US lawyers shared a case example from his own experience. In that case, it was disputed whether the disputed technological documents were prepared by the expert himself. Judging from the available evidence, the expert had done everything properly, but in the process of cross-examination, everyone in the court could tell that he did not actually write the technological documents.
The US representative also used the expert witness system as the example to explain. US procedure has two kinds of witnesses: fact witnesses and expert witnesses. Theoretically, expert witnesses are just and objective, but they actually receive a fee for their testimony, which means that their neutrality will be questioned. The check and balance on this system is that both parties to the lawsuit can invite expert witnesses. For this reason, even ordinary people with no technological knowledge can make conclusions on the disputed issues in the case through interpretation of both side’s witnesses.
The author asked about amendment to the US Patent Law. The US representative introduced several systemic changes, but because he spoke fairly quickly, the author was only able to record a synopsis. 1. The prior art; 2. Additions to regulations to challenge to the current patents, such that patents face more opposition before they are granted rights; 3. Revision to the process of granting patents to make them more in line with European patent law—currently all lawsuits to determine invalidity, according to the latest law, the Patent & Trademark Office hears all the opposition to patent applications, and therefore software and business method patents face various challenges; 4. Starting March 16 2013, granting patents will change to the first to apply principle rather than the existing first to invent principle; 5. Separate hearing of patent infringement cases and patent effectiveness cases.
At the end, the US attorneys mentioned the choice of judges in US courts. Lower court judges have more power in hearing patent cases, and many judges enjoy handling the patent cases. So far, however, there has been no professionalization of judges hearing patent dispute, and judges are chosen at random.
That afternoon, the author visited another law office, Pryor Cashman LLP. A partner from this law firm introduced us to the American IPR system. US trademark, copyright, and patent law all have a constitutional basis, and the Constitution, which was released several centuries ago, has all of the relevant rules. A patented design in the US enjoys a protection term of fourteen years, and the term for new plant varieties is also fourteen years.
The author asked the how to settle a conflict among trademarks in different classes. For example, games are registered in Class 9, and online games are in Class 41; If two different companies register two trademarks in these two classes and both are operating their own game, how is such a conflict resolved? The US lawyers replied that this kind of problem is rarely seen in the US because the country follows the principle of “first use.” This means that ownership of the trademark is decided by who first used the trademark instead of who first applied for it. The author’s associates asked whether delivery of advertising material for the product will be taken as evidence of use. The reply was that it could not be taken as adequate evidence since whether the product has been put into sale is the key issue. The next question was whether licensing another to use is a kind of use under the law. The answer was that once the licensee uses the product, the effect covers the licensor.
We also raised questions about the whether parallel import of trademark constitutes infringement. The US representative replied that the Supreme Court recently made a decision on parallel copyright imports. (The attorney we met on that day did not tell us any details of the case. But, later on, a lawyer in St. Louis introduced its facts to us: a textbook was sold for $ 100 in the US but only $ 5 when purchased overseas, and when a businessman imported it from other countries, the Supreme Court ruled that it was not infringement). He also provided a comparison: when a watch of the same brand was imported from Malaysia into the US, it was not infringement, for the watches are the same, even they are sold in different places. But, the import of Malaysian chocolate that has different flavor and ingredients from its US counterpart is infringement even if the brand is the same,. US trademark holders greatly value trademark protection because if does not protect against the infringement, it will lose the trademark right.
The author then used the example of dolls resembling Steve Jobs to ask whether US law protects personality rights of the deceased. By general juridical theory, the personality right is a personal right that does not receive protection after death. The US representative replied that the answer is different in different places, and it depends on the laws in each state. For example, in California, both the name and image of the deceased are protected by the law. New York does not have as many rules as California, but the personality right of the deceased is also protected.
The US representative also introduced us to issues concerning trade secret law. A trade secret is the most difficult right to develop and also the easiest to be infringed. In the US, state law protects trade secrets. The federal government also has its Uniform Trade Secrets Act, which has been accepted by forty-seven of fifty states., excluding Massachusetts, New York, and Texas, which have their own different laws. Regarding trademarks, in addition to the TM abbreviation for TradeMark, the US also has SM for ServiceMark.
This essay may appear messy because it is the minutes discussions with US attorneys rather than a systematic discussion. For this reason, there are few notes recorded and the topics are scattered. The writer finished this essay while waiting for the airline back to China in Los Angeles, and after the visit in New York, the author went to St. Louis, Salt Lake, and San Francisco. The content of these visits was also very splendid, and the author hopes to further share his experience after returning to China.
In closing, the above record was taken by the writer himself, who recorded some content that might be incomplete or inaccurate. He decided to put them on our website primarily to share with our readers, and any opinions or corrections are warmly welcomed. Since the US authorities highlight the protection of personal information, unless the other party agrees, we will not publicize the names of any of the involved parties on the Internet; thank you for your understanding.
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You Yunting：86-21-52134918 youyunting@debund.com/yytbest@gmail.com
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