This CAMentrepreneurs event was organised by Claudia Duffy as per here https://camentrepreneurs17.eventbrite.co.uk with hosting by Richard Lucas, Founder www.linkedin.com/in/richardhlucas Dr. Claudia M. Duffy, CAMentrepreneurs Scotland https://www.linkedin.com/in/dr-claudia-m-duffy-8036191b/ Robert Howells, CAMentrepreneurs New York https://www.linkedin.com/in/robertlhowells/ The IP US specialist – Dr. James R. Major, Associate, Norris McLaughlin Attorneys at Law (New York, USA) https://norrismclaughlin.com/attorney_profiles/james-r-major/ and The China and Hong Kong specialist - Anna Mae Koo, Partner, Vivien Chan & Co (Beijing, China and Hong Kong) http://www.vcclawservices.com/index.php?cid=66 Zoom Channel introductions https://docs.google.com/document/d/1GGyQW0ObQlXvXR1W8w599pup4n05KQ4--paKDCF_o1k/edit?ts=5ef3f1f2 CAMentrepreneurs https://www.alumni.cam.ac.uk/group/camentrepreneurs

1. IP for International Markets
Dr. Claudia M. Duffy
European Patent Attorney & Founder of Innovare IP, Head of CAMentrepreneurs Scotland
Dr. James R. Major
Associate, Norris McLaughlin, P.A.
Anna Mae Koo
Partner, Head of Intellectual Property, Vivien Chan & Co. (Greater China Lawyers)
24th June 2020

2. Why CAMentrepreneurs?

3. Why CAMentrepreneurs?
‘Set in motion’ in Edinburgh
(December 2016)
Launched in London (Feb 2017),
New York (April 2017), Poland
(Sept 2017), Sydney (October
2018), Dubai (April 2019),
Cambridge (October 2019)
Investigating launches in China,
California
Follow-on events in Edinburgh,
London, New York, Cambridge
Engaged various entrepreneurial
communities around the globe

4. Why CAMentrepreneurs?
Our Mission
Our objective is to encourage the support of entrepreneurship among Cambridge Alumni,
Current Students and others. We aim to bring together positive minded alumni and others who
want to work together to support enterprise, whether as entrepreneurs, investors, students or
service providers. We want to inspire and assist its members to start, grow and invest in
outstanding businesses by providing a structure that allows them to share their knowledge,
experiences and networks.
http://www.camentrepreneurs.com/about/

5. Dr. Claudia M. Duffy
European Patent Attorney & Founder of Innovare IP, Head of CAMentrepreneurs Scotland
A former Scientist turned Patent Attorney, Claudia has also become an entrepreneur by founding Innovare IP, a
boutique practice of attorneys and IP consultants serving the entrepreneurial communities in Scotland and the South-
East of England.
Claudia is an European Patent and Design Attorney and, since entering the patent profession in 2008, she held both
private practice attorney roles (in London, Cambridge and Edinburgh) and in-house attorney roles (for two Cambridge-
university spin-outs from her former PhD Group). Claudia is acting as IP Consultant for various legal practices and angel
investors and as pseudo in-house attorney for young companies. Claudia regularly provides IP training and mentoring
to various accelerators and universities in Scotland and South-East of England.
Claudia has lived, worked and studied in three European countries. Starting with a BSc in Physics and Chemistry,
Claudia went on to pursue graduate research in Physics through MSc and PhD degrees in Munich and Cambridge
respectively. Her graduate degrees were based on industrial sponsorships – MSc sponsored by Siemens and Infineon
Technologies in Munich and PhD sponsored by Hitachi in Cambridge – which enabled her to work at the forefront of
innovation. Claudia also worked as Research Scientist for Infineon Technologies in Munich.
Whilst in Cambridge, Claudia has developed a strong interest in entrepreneurship and in 2015 she co-founded the Strategic IP Forum in collaboration with the
Centre for Technology Management at the University of Cambridge. Since relocating to Edinburgh in 2016, Claudia has been the Scottish lead of
CAMentrepreneurs, a global support network fostering and encouraging entrepreneurship in Scotland and aiming to create strong links between Scotland and
the South-East of England. Claudia has also spent one year working in collaboration with the University of Edinburgh on increasing the industry engagement,
bridging the gap between medical and engineering sciences and commercialising university-generated IP from the Engineering Sciences. Since 2018, she
has also started to act as Advisory Board member for young Scottish companies.

6. James R. Major, D.Phil.
Associate, Norris McLaughlin, P.A.
James R. Major dedicates his practice to U.S. and foreign patent and trademark matters. His doctorate in
immunology and virology as well as over ten years’ legal experience, enable him to understand the
patentability of new technologies, as well as the science and data required to secure and expand patent
protection in light of new statutory subject matter requirements
James is exceptionally qualified in patent prosecution matters relating to small molecules, nucleic acids,
proteins, antibodies, chemical processes, formulations, industrial processes, and methods of treatment. He
is highly experienced in rendering patentability, landscape, freedom-to-operate, and invalidity opinions
particularly in the field of biologics. James can assist players in the emerging cannabis industry in the
evaluation and securing of patents. He also has patent litigation experience.
Additionally, James is experienced in trademark matters, including preparing and prosecuting domestic and
foreign trademark applications and advising clients on trademark strategies and registration procedures, as
well as trademark opposition and cancellation proceedings. He also has trademark litigation experience.
James represents clients of all types, from independent inventors to brand-name companies,

7. Anna Mae Koo
Partner, Head of Intellectual Property, Vivien Chan & Co. (Greater China Lawyers)
Anna Mae Koo is Head of IP for Vivien Chan & Co, a greater China full service legal practice of over 30 years
with a renowned IP practice.
Anna Mae has consistently been listed on the Who’s Who for IP in Asia, and also named the Rising Star
Lawyer in various publications including Managing IP. Anna Mae manages and advises on IP portfolios for
global MNCs including brands such as Epic Games (FORTNITE), American Airlines, NBC Universal, Ford,
Dreamworks etc.
She also helps companies and venture capitals navigate the terrain of Chinese and Asian intellectual
property strategy, winning back trademarks and suits for the likes of Yves Saint Laurent, G-Star Raw etc.
Anna Mae is a Prince Philip Scholar and read Law at Peterhouse, Cambridge.
Anna Mae is active amongst tech entrepreneur spheres globally. She was a Techstar mentor in London,
serves on the US$300 million Innovation and Technology Venture Fund for the HKSAR Government, was an
advisor for CapitaLand (Singapore)’s C31V corporate venture fund, and is also on the Entrepreneurship
Committee Advisory Group for Cyberport Hong Kong. Anna Mae is also involved in various international
associations, including the International Bar Association (IBA) and the International Trademark Association
(INTA).

8. Lawyer and/or Trademark Attorney Patent Attorney
Scientist
Lawyer
Energetic
Passionate
Upright
Aspirant
No divorce cases, no real estate
transactions, no murder cases
JUST INNOVATION

9. What are IAs (intellectual assets)?
 creations of the mind:
 Innovation and inventions
 literary and artistic works
 symbols, names and images used in commerce
 various value-adding materials (website materials, standard operating procedures, software, technical drawings)
 trade secrets and confidential information (business development plans, customer and supplier lists, databases, etc)
 intangible creations – definable and tradeable (may be bought and sold like property, can be licensed)
What is IP protection (for IAs)?
 exclusive IP rights (IPRs)
 national (UK, US, CN, HK, JP, etc) and regional (Europe, Eurasian, etc) rights - to prevent others from using
your IP for a fixed period of time
 sometimes registerable IPRs (patents, trademarks, designs), sometimes not (copyright, database right)

10. IAs and
IPRs
Patents
Data and
database
rights
Know-
How
Trade-
marks
and
brand
namesSoftware
Copyright
Design
Rights
Reagents
& tools
(source code, binary code, apps)
(teaching materials, writings, music, art)
(formulae, instructions,
trade secrets, methods,
processes)
(antibodies, chemical
libraries, animal models)
Types of IAs and IPRs

11. Patents
• Apparatus and method for
monitoring coagulation
• Analytical device and method
of production
• Electrochemical sensor strips
(method of making a
biosensor,
a patterned metallic layer)
• Method for error checking the
electrochemical sensor
• Methods of producing tissue
factor protein using
recombinant expression
systems
• Prothrombin time reagent
One product
– many
types of
IPRs

12. Automatic IPR protection
Type of
protection
Examples Duration
Copyright,
Database
Rights
Writing & literary
works, art, photos,
films, TV, music,
web content, sound
recordings, software
Life + 70 years
Unregistered
Design Right
Shape/
configuration of
objects
14 years from creation
OR 10 years from 1st
marketing
Unregistred TM
(or goodwill)
product names,
logos, brands
Lifetime
Know-how,
trade secret
Inventions,
confidential
information
indefinite
Registered IPR protection (have to apply for it)
Type of
protection
Examples Duration
Trade marks Product names, logos Lifetime (renew
every 10 years)
Registered
Designs
Appearance of a product
including, shape,
packaging, patterns,
colours, decoration
25 years (renew
every 5 years)
Patents Inventions and products,
e.g. machines and
machine parts, tools,
medicine
20 years (renew
every 1 year)
Utility
models
Similar to patents; only in
certain countries (DE, FR,
IT CN, JP, AU)
6-15 (typically
10) years
(renewal
periods vary)

13. What is innovation?
• Innovation is an advancement over existing knowledge
– by means of a new idea in the form of a device, product, process, etc. OR
– by means of using existing knowledge to create new uses for known devices, products,
processes, etc or to improve existing devices, products, processes, etc
• thus innovation is the application of original and more effective solutions to meet new requirements, to
solve problems, to explore new markets, to create new areas of technology, etc.
• and innovation is implemented via an engineering process or solution to a problem of a technical or
scientific nature.
• Innovation paves the way to inventions, in that innovation often involves the practical implementation
of an invention.

14. How to manage innovation?
- continuous IA and IPR
review v commercial goals
innovation invention

15. Trade Secrets
• A trade secret is generally information that provides an economic advantage from not being
publicly known
– There is an obligation to take reasonable measures to protect the information from
disclosure
• In practice, many trade secrets are mundane
– The formula for COCA-COLA®-brand soda versus a customer list
– The “reasonable measures” typically prevent access to the information
• The scope of protection can be limited
– Some trade secrets have been inadvertently disclosed
– There is no protection for independent derivation of the trade secret
– A patent can protect an inventor’s rights for a limited time at the cost of disclosing the
trade secret

16. General Considerations for Patents (1 of 2)
• What is a patent?
– Strictly speaking, a grant of rights from a governmental organization
– The word is taken from the Latin word patent, meaning “lying open”
– There are no “common law” patent rights
• Different kinds of patents
– Utility, design, and plant patents in the United States
– Petit patents in some jurisdictions
• Terms of patents
– U.S. utility patent: generally speaking, twenty years from first filing date
– U.S. design patents: fifteen years from date of issue

17. General Considerations for Patents (2 of 2)
• Types of patent applications
– Domestic provisional and non-provisional applications
– International, regional and national stages of PCT applications
• Requirements for examination of a patent application
– A specification (a lengthy description of the invention)
– A claim (a single-sentence description of the invention)
– The claims define the legal rights associated with the invention

18. Patent Examination (1 of 2)
• The claims must recite patentable subject matter
– This used to be “anything under the sun that can be made by man”
– Now a focus on the “inventive concept”
– Dating apps as an example of a computer-implemented invention with potential issues
• The claims must be definite
– A can opener becomes “an apparatus comprising a blade”
• The application must “enable” the claimed invention
– The specification must allow someone to practice the claimed invention
– Enablement is viewed through the eyes of a person of skill in the art
• Frequent local quirks
– Utility, written description, and best mode requirements in the United States

19. Patent Examination (2 of 2)
• Claims are examined with respect to the prior art
– First-to-file (generally no grace periods) or first-inventor-to-file (with grace periods)
• Novelty
– A single difference between the claimed invention and the prior art will suffice for
novelty
– Typically based on one reference
• Obviousness/inventive step
– The claimed invention must be more than an application of knowledge in the prior art
– Typically based on more than one reference
– A frequent rationale is a motivation to modify or combine references
– Such a rationale also requires a reasonable expectation of success

20. Strategic Considerations
• What’s the invention?
– Hand-held can openers typically have a round blade, a gear to grip the can lid, and a
turnable handle but do you really need more than a blade that can puncture the can?
• Where’s the value?
– Knowledge of the market required
• Budgeting for patent applications
– About 8,000 USD for a simple mechanical invention
– 15,000 USD and up for computer-implemented and biotech inventions
• Multiple application approach
– The earliest application as the basis for numerous later applications
– The PCT system as a way of limiting costs of later applications
– Continuations and divisional applications to pursue claims of differing scope

21. What Constitutes a Registrable Trademark?
• Trademark generally refers to a sign that distinguishes the goods and services of one trader from those
of others
– Can be word, device, letter, numeral, three-dimensional symbols, combinations of colors, sound as
well as a combination of the above
• Is trade dress registrable?
– The look and feel of products or services, including a product's packaging and design, a business's
employee uniforms, and the layout and design of its stores or facilities generally fall into the
category "trade dress”
– Each jurisdiction has its own rules governing the registrability of trade dress
• Trade dress is generally registrable in the US
• In EU and China, trade dress can be protected by a combination of different IP rights,
including trademarks, design patents and copyrights
– To be registrable as a trademark, it must be both distinctive and non-functional
• Is trade name registrable?
– While a trade name is not usually considered a trademark, it can be entitled to protection under
trademark laws if it is used by the business to identify products or services and it is distinctive
enough

22. Is Your Trademark Inherently Registrable?
• Distinctiveness: the ability to distinguish itself from other marks or signs
– Must not be descriptive of the goods/services applied for
– China: non-distinctive examples under the examination guidelines
o Excessively simple lines, ordinary geometry OR Excessively complex design
o One or two original letters with no or minimal stylizations
o Arabic numerals with no or minimal stylizations
o Common greetings
• Indication of Geographical Origin
• Other Prohibitions (vary between jurisdictions)
– Common examples: armorial bearings, flags and other state emblems of states; the red cross, the red
crescent and the red crystal emblems ( ); the Olympic Symbol ( ); obscene / immoral
trademarks
– China: examples of other prohibitions
o Full company names
o References to company form (e.g. “Group”) / trade name / business nature inconsistent with the
name of the applicant

23. Does Your Trademark Conflict with Earlier Trademarks?
• Some countries review conflicts (e.g. US and China cf. UK) based on the overall
impression given by the marks
• China: Unique examination practice
– Each element of a composite mark is examined on its own:
o English words
o Chinese characters
o Numeral
o Device part
– Should any of the element of a composite mark be considered similar to a
prior mark or any of its elements, a citation objection will be raised
• Conduct trademark clearance searches before filing
– Identify potentially conflicting marks and issues on inherent registrability at
the earliest stage to better develop the filing strategy and actions to
overcome the potential objections
Similarity in English Words
Similarity in Devices
Similarity in Numerals

24. Devising Your Chinese Brand Names
• General public in China tend to
– Refer to foreign brands in Chinese
– Devise their own Chinese versions if there is no preselected official names according to their
dialects
• Preemptive filing by trademark squatters and even business partners
 risk of trademark infringement
– E.g. New Balance
• Importance
– Help foreign companies to enter Chinese market effectively
– Retain control of your Chinese brand name
– Ensure all distributors/agents will use the same name
– Eliminate the need to fight against squatters

25. 4 Ways to Develop Your Chinese Names
Methods Examples
1 Transliteration 阿迪达斯
[ā dí dá sī]
2 Translation 花花公子
[huā huā gōng zǐ]
3 Translation +
transliteration
Starbucks 星巴克
[xīng bā kè]
4 Transliteration +
meaning
可口可乐
[kě kǒu kě lè]
可口 = tasty
可乐 = entertaining

26. Trademark Registration
Process (China as an
example)

27. Trademark Applications: Highlights
• First-to-File or First to Use? (China, Asia, Europe: first-to-file vs. US: first-to-use)
• Madrid Agreement/Protocol: Offers one-time registration in 122 countries
– Check: Deadlines for Claiming Priority and whether extendible (e.g. China non-extendible)
– Central attack issues
• Where to File:
– Mainland China, Hong Kong, Taiwan, Macau are different trademark regimes
• Proof of Use Required?
– China: During the examination process, e.g. to prove honest concurrent use or acquired
distinctiveness through use before the date of the application
– For the purpose of defending a non-use cancellation action
– US: to support the registration of trademark
• Filing basis: Use in commerce basis / Intent-to-use basis (evidence must be submitted within
6 months (extendable up to 3 years) from the Notice of Allowance date)
• Nice Classification System (45 classes of goods and services)
– China: special subclass system for determining similarity of goods and services

28. What If You Don’t File?
• Protection of Well-known Trademarks
– Marks having acquired high reputation and influence among the public through
extensive and continuous use
– High threshold
• Unfair Competition / Passing Off
– Protects product names, product packages, trade dress, and trade names
– Requires to show that the aforesaid has attained a certain level of influence / goodwill
• Alternative: Copyright in stylized trademarks
– Prima facie right upon creation
– Recordal possible in the US and China
– Required to show substantial similarity for infringement actions

29. Patent filing strategy (for
patents originating in UK)
– build a ‘patent family’
*m = month

32. *PPH – patent
prosecution highway

33. How should companies to manage IAs and IPRs? – create an ‘IP Portfolio’
IAs and IPRs should be
– committed to written documents (paper or electronic) – audited ‘lab-book’ principle
– dated and traceable
– complete and transferrable
Think of ‘what if innovator/author was run over by a bus?’ scenario!
How / where to use the IP Portfolio?
• marketing – unique, special, innovative
• negotiations with partners, customers (e.g., licence IP)
• secure investment

34. For further discussions …
please get in touch directly with us
UK, EU and international patents and trademarks with Dr. Claudia M. Duffy
https://www.linkedin.com/in/dr-claudia-m-duffy-8036191b/
US and international patents and trademarks with Dr. James R. Major
https://www.linkedin.com/in/jamesmajor/
CN, HK and international trademarks with Anna Mae Koo
https://www.linkedin.com/in/annamae-koo/