Event summary

April 17, 2018

9:00 a.m. ET - 11:00 a.m. ET

Add to Calendar2018-04-17 09:00:002018-04-17 09:00:00Understanding Utility Model Patents in China - Webinar The utility model patent (UMP) is a category of patent granted in China. It is meant to protect incremental inventions, demands a comparatively lower level of inventive step than those of invention patents, and generally takes less time from filing to grant. Compared to many foreign companies, however, U.S. companies do not often file UMPs in China. For this two-hour webinar, the U.S. Patent and Trademark Office’s Office of Policy and International Affairs has brought together a group of five experienced private practitioners and in-house counsel to offer their expertise and practical insights on UMPs and how U.S. companies can best utilize them when doing business in China. Speakers: Tom Moga, Partner, LeClairRyan Thomas T. Moga is a partner with the law firm of LeClairRyan. A registered patent attorney, his experiences include preparing and prosecuting patent applications, developing domestic and foreign patent portfolios, preparing freedom-to-operate and other patent-related opinions, licensing and policy development. Mr. Moga also manages patent enforcement and anti-counterfeiting actions in Asia, including overseeing initial investigation, working with local investigators and counsel, and preparing administrative and judicial documents. A frequent speaker on the TRIPS Agreement of the WTO and on global patent portfolio development and enforcement, Mr. Moga lived and worked in Taiwan and China. He was a Fulbright Scholar in China and acted as an instructor to patent examiners at China’s State Intellectual Property Office. He is a member of the Board of Directors of the American Intellectual Property Law Association and is also a past member of the Board of Directors of the Fulbright Association. Mr. Moga is the author of "Patent Practice and Policy in the Pacific Rim” (Thomson Reuters), a multi-volume treatise on patent law and practice in Asia, and "China’s Utility Model Patent System: Innovation Driver or Deterrent" (U.S. Chamber of Commerce). Toby Mak, Partner, Tee & Howe Dr. Toby Mak has somewhat unique background as a registered Chinese patent attorney. Before obtaining the Chinese qualification, he was trained under the UK patent system, and has passed some of the UK patent attorney’s examination papers. Because of these, Toby is able to draft patent specifications in both English and Chinese. Toby has a PhD degree in chemistry, and over 18 years of experience in the patents and designs industry, with substantial exposure to the handling of both contentious and non-contentious matters. He actively publishes articles on Chinese IP regularly, and is one of the authours of the book "Patent Law in Greater China" published with the European Patent Office. He is also frequently invited by various organizations around the world to speak on Chinese IP, including the USPTO, the European Patent Office, the European Chamber of Commerce, the UK Chartered Institute of Patent Attorneys (CIPA), Licensing Executive Society, and the Canadian Embassy. His clients include investors, local and overseas research institutes, multinational power tool company, manufacturer of adhesives and elastomers, universities, video-on-demand company, and companies specialized in gene detection and pharmaceutical compositions development. He is a member of the All-China Patent Agents Association and AIPPI, and a foreign member of the UK CIPA. Cheney (Chi) XU, IP Law Manager, IBM Corporation Xu Chi (Cheney) joined IBM IP Law in 2008, and is now the Senior IP Law Attorney and a manager in IBM Greater China Group and Asia Pacific IP Law. Xu Chi is now responsible for all IP matters (except for trademark) in IBM China Research Lab, India, Hong Kong, Taiwan, Australia and New Zealand, and manages patent attorney team of IBM China Research Lab and the India IP Law department. He has been working as the Vice Chair of IPR Group of USITO since 2015. Xu Chi is qualified as both China Patent Attorney and China Attorney-at-Law, and has obtained a bachelor degree on Electronic Engineering, a master degree on Law, and a master degree on Electronic & Telecommunication Engineering. Greg Brown Senior Intellectual Property Counsel for Asia Pacific Global Engine Business, Ford Motor Company. Mr. Brown provides advice on intellectual property creation, protection, transactions and enforcement to Ford clients located around the world. His true passion is leading global engineering teams in brainstorming initiatives on brand supporting technologies. Mr. Brown has held overall IP responsibility for China since 2004. Katie Maksym, Columbia Sportswear Katie Maksym is the Patent Administrator at Columbia Sportswear Company. She has worked in intellectual property procurement and enforcement for the last 20 years. Katie’s true passion in IP practice focuses on the protection of the creative design aesthetic and finding new and inventive ways for companies to protect their most important asset, the imaginative output of their groundbreakers and trailblazers in design. Moderator: Elaine Wu, Attorney, USPTO Elaine T.L. Wu is an attorney in the Office of Policy and External Affairs the U.S. Patent and Trademark Office. In that capacity, Ms. Wu is responsible for providing legal and technical assistance to foreign governments to assist them in complying with their international intellectual property law obligations, analyzing U.S. legislative proposals and participating in the development and implementation of changes to the patent laws, developing U.S. positions in coordination with other U.S. Government agencies on intellectual property for international multilateral and bilateral agreements, and negotiating various patent law related issues with foreign governments, on behalf of the U.S. government. Ms. Wu also serves as the team lead for the “China team”, a group of attorneys at the Office of Policy and External Affairs with specific expertise and knowledge about China’s patent, trademark, copyright and enforcement system. Prior to coming to the U.S. Patent and Trademark Office 11 years ago, Ms. Wu worked as a patent litigation associate at Howrey, Simon, Arnold and White in Washington, D.C. Ms. Wu has also worked at the International Trade Commission’s Office of Unfair Import Investigation where she handled legal issues relating to Section 337 of the Tariff Act of 1930, as amended, and at the Office of the U.S. Trade Representative’s Office of China Affairs. Ms. Wu received her law degree from the Washington College of Law at the American University in Washington D.C. She holds a Bachelor of Science degree with honors from the University of Florida. She is licensed to practice law in the District of Columbia and in the Commonwealth of Pennsylvania. Moderator: Larry (Lubing) Lian, Attorney-Advisor, USPTO Larry is an attorney-advisor with the China team at the Office of Policy and International Affairs of the USPTO. In that capacity Larry provides legal and policy advices on domestic and international IP issues, particularly on patent and pharmaceutical issues. Larry also manages the China Resource Center, which was established under the USPTO’s 2014-2018 Strategic Plan to develop and advocate empirical data analysis to guide USPTO initiatives and policy recommendations. Before joining the USPTO Larry was in private practice for five years with Syncoda and Foley Lardner. Larry’s practice focused on patent law as well as food and drug law. Before his private practice, Larry also worked as a student law clerk for Judge Franklin Van Antwerpen of the Third Circuit and Judge Paul Tressler of the Pennsylvania Court of Common Pleas. Prior to switch his career into law Larry worked as a scientist with three leading biopharmaceutical companies, Myriad Genetics, Cytogen/Jazz Pharmaceuticals and Barr/Teva Pharmaceuticals. At these companies Larry was responsible for research and development of new drug targets and new drugs, as well as presenting clinical trial analysis for FDA approval. Larry has co-authored a number of scientific papers in leading journals such as Cancer Research. Larry holds a Juris Doctor degree from Temple University School of Law and a Master of Science degree in biology from Nankai University in China. Presentations: Introduction to Utility Model Patents in China, Thomas Moga The Role of UMPs in a Strategic IP Portfolio, Katie Maksym Challenges Posed by UMPs: How to Manage Them, Toby Mak Eligibility of Software-implemented Utility Model Patents in China, Xu Chi (Cheney) Managing an IP Portfolio in China, Greg Brown Agenda: Please view the agenda here. Additional information: For non-press inquiries, please contact Kelly Sheng at the USPTO’s Office of Policy and International Affairs, telephone (571) 272-2227. America/New_Yorkpublic