Unidentified objects
The world is changing faster than ever before. Globally, technology is changing everything we do. Crossover products and services are becoming more attractive to consumers. We are seeing more and more products and services equipped with new technology, such as fabric nanowire clothing, 3D printing, blockchain, and internet of things—terms we did not hear 20 years ago.
All these have changed the landscape of the traditional classification system and the existing criteria on similarity.
On the one hand, we embrace emerging technologies as well as their brilliant future, but on the other hand, we should also be more creative and proactive than before in considering the nature of the "new" goods and services.
The IP world should better coordinate and give the emerging tech new identifiers. This is particularly a big challenge for right owners, IP lawyers and the IP offices of all jurisdictions.
It is a very important issue for brands at the moment because they need to audit their own new technology and, if possible, frame it to the existing classification systems, sometimes in many jurisdictions. To help with this, they should maintain close communications with corresponding IP authorities.
So how can IP counsel ensure these innovating brands and businesses have adequate protection and clearance?
From a perspective of prosecution, IP counsel should firstly identify these innovating brands or businesses to help identity what types of IP rights are needed. They should then file or register the IP rights in selected markets that are relevant to the brand or business.
With respect to the different types of IP rights, there are different prosecution strategies. For example, for patents, IP counsel shall pay attention to the draft of the claims to ensure that such patents are enforceable in the future.
For example, the claims may be drafted or amended while considering the competitor’s products or copycats found in the market. Also, IP counsel shall ensure that the application or registration is inconsistent with the local laws. For example, the US has a 12-month grace period for design patents while China does not.
Beyond trademark protection
New approaches bring fresh challenges involving IP protection. In most cases, there is no “one size fits all” strategy.
Regarding any IP action beyond the traditional trademark protection, on the one hand, IP counsel may monitor competitors’ products or counterfeits or copycats in the market.
IP counsel should make sure any evidence of infringement has been well collected. Also, different countries offer different options for the rightsowner to enforce their IP rights.
For example, in China, besides litigation, the administrative protections (raid action or customs recordal) would save time and costs.
Before the emerging products or services are put into the business, IP counsel should evaluate the potential risk for patent infringement, trademark infringement, and even the risk of unfair competition.
Freedom to operate (FTO) searches, which can be used to ensure that such product or process does not infringe other valid IP rights, also a good idea.
Spring Chang is founding partner of Chang Tsi & Partners. She can be contacted at: springchang@changtsi.com
Michael Wu is a partner at Chang Tsi & Partners. He can be contacted at michaelwu@changtsi.com
Today’s top stories
USPTO severs ties with counterparts in Russia
Adidas hits Fashion Nova with fresh suit over Stan Smith shoes
