Nixon Peabody is hosting an exciting event where some of the most respected law firms in Asia will discuss the future of patents and trademarks. If you're a tech company that sells products and services in the East, you won't want to miss this. The panel will share practical insights, success stories, and cautionary tales related to intellectual property, protection, enforcement, licensing, and monetization.
In anticipation of the event, I had the chance to catch up with each of our guest speakers. They gave me a sneak peek of the topics they will cover and shared what attendees can expect to learn. I am truly grateful to each of our guests for sharing their knowledge and insight and for joining us for what promises to be an engaging conversation.
On Lu (Nixon Peabody LLP)
Any technology company that wishes to establish a presence in Asia, whether it is for manufacturing, sales, or marketing, must carefully evaluate its IP strategy. While there are many opportunities in the region, it is critical for companies to protect their IP to ensure long-term success.
Having worked with organizations on both sides of the Pacific, I know this can be a challenging process due to the local nuances across the region. However, with the right partners and proper planning, tech companies can position themselves for success. That is why I am excited about our “Silicon Valley to Asia” panel, which will provide valuable regional perspectives on this topic.
Winona Chen (Lee and Li, Attorneys-at-Law)
Tech companies must have a robust IP strategy in Taiwan and China for several reasons:
- Protection of intellectual property: Taiwan and China are known for their strong manufacturing capabilities and large consumer markets. Without a robust IP strategy, tech companies risk having their IP misappropriated or copied by competitors, leading to a loss of market share and revenue.
- Legal requirements: Both Taiwan and China have specific IP laws and regulations that tech companies must adhere to in order to protect their inventions and innovations. Failing to do so can result in legal disputes and financial losses.
- Market access: Having a strong IP portfolio in Taiwan and China provides tech companies with greater access to these markets, as it demonstrates a commitment to protecting their IP and helps build trust with local partners and customers.
- Access to local talent and resources: Taiwan and China have skilled workforces and advanced manufacturing capabilities, making them attractive locations for tech companies to establish a presence. A robust IP strategy helps companies recruit and retain local talent; it also ensures that companies' innovations are developed and produced with the necessary protections in place.
- Competitive advantage: A robust IP strategy provides tech companies with a competitive advantage in Taiwan and China, as it helps them differentiate their products and services from those of their competitors. Consequently, they secure a stronger position in the market.
For tech companies that seek to protect their intellectual property, comply with legal requirements, access the market and local talent, and gain a competitive advantage in Taiwan and China, a robust IP strategy is essential.
Shuichi Shitara (TAIYO, NAKAJIMA & KATO)
In today's rapidly advancing technological landscape, understanding patent strategies for US tech companies in Japan, particularly in software and AI, is crucial. Japan is not only a significant player in technology but also a major market for tech products, making it essential for US firms to protect their intellectual property in this competitive arena.
The patent systems between the US and Japan vary, with specific requirements and opportunities that are critical for safeguarding inventions. Recent updates in Japan's patent laws, especially concerning software and AI, underscore the urgency of staying informed to avoid legal challenges and facilitate smoother market entry. Strategically managing IP involves navigating through Japan's legal landscape, understanding patentability criteria, and employing tactics to mitigate competitive threats.
Moreover, Japan offers economic incentives such as official fee reductions and expedited processes for patent examinations, presenting both financial benefits and strategic advantages. The seminar aims to equip US tech companies with the necessary knowledge to effectively engage with Japan's dynamic market and optimize their IP strategies.
Danny Yoon (SEUM IP)
In Korea, obtaining a patent is the most important and powerful way to protect software inventions. If the claims are prepared effectively, infringement judgments tend to be favorable. However, you need to be very careful about who / what works the claimed elements, and need to use more aggressive prosecution strategies. After a brief overview of how a patent application on software inventions is examined in Korea, we will discuss how to prepare effective claims.
Gerald Samuel (Marks & Clerk Singapore LLP)
In the US, trademark rights are established through actual use in business, meaning that the first company to use a mark in business usually has stronger rights. This system encourages companies to use their marks quickly and consistently.
However, in most Southeast Asian countries, trademark rights are granted to the first company to file an application for registration, regardless of whether they were the first to use the mark in business. The general exception to this rule is if the first user can establish that their mark is well-known by virtue of long-established use, which is typically difficult to prove due to the high threshold required. This first-to-file system highlights the importance of registering trademarks early to protect intellectual property.
Understanding these differences is crucial for businesses operating in both regions. In the US, it's important to start using a mark to claim rights, while in Southeast Asia, priority is given to obtaining registration. Failing to understand these distinctions could result in the loss of trademark rights or expensive legal disputes