IP attaché stakeholder case studies

The situation

American pharmaceutical companies are creating and providing high-quality medicines that help people live longer, healthier, and more active lives not only at home, but around the world. Critical to these efforts is ensuring that these medicines are safe to use and prescribed appropriately.

The challenge

A prominent U.S. pharmaceutical company discovered that one of their patented lifestyle medicines was being used in herbal supplements in Kazakhstan without the company’s consent. Alarmingly, these supplements contained one of the company’s active ingredients at two to three times the maximum recommended dose, which was presenting a health risk to unsuspecting consumers.

The solution

The U.S. pharmaceutical company initially relayed its concerns to the U.S. Commercial Service at the U.S. embassy in Almaty, Kazakhstan, who in turn alerted the IP attaché responsible for covering the post-Soviet republics of Central Asia. The attaché met with officials of the government of Kazakhstan to raise the company’s concerns. A subsequent review of the matter by Kazakhstani officials led to the cancellation of the Kazakhstani company’s registration for the dangerous and potentially harmful herbal supplements, and they were removed from the market.

Lessons learned

The IP attachés can be a valuable resource for U.S. companies. By directly engaging with foreign government entities, the IP attaché helped prevent the flow of dangerous and harmful herbal supplements to unsuspecting consumers, and protected a U.S. company’s IP in this market. 

The situation

Our stories and experiences are brought to life by the creators and artists working in U.S. music, film, and television. Supporting these creators and artists by protecting and safeguarding their copyrighted content is critical to fostering and maintaining an innovative economy.

The challenge

The market for streaming creative content in Latin America is expanding rapidly. But as technology allows us the convenience of instantly watching a variety of content on multiple devices, anytime, anywhere, it also opens the door for tech savvy individuals to steal and resell content at a significant discount, to the detriment of U.S. creators. In recent years, the theft—or piracy—of copyrighted software, music, TV, and movie content has become a major concern in Latin America. From the downloading of unauthorized versions of copyrighted content from file-sharing sites, to illegally copying music using stream-ripping software or mobile apps, to the unauthorized use of illicit pay-TV streaming boxes to stream TV and movies, U.S. producers are having their content pirated at an alarming rate.

Although digital piracy can be stemmed if treated in an organized and systematic manner, law enforcement and other government officials in Latin America often lack the knowledge and resources to combat piracy effectively.

The solution

The IP attaché based in Peru organized a U.S. government–led training on digital IP rights enforcement. The training covered a wide range of topics, including:

• The prosecution of IP crimes
• Best practices in identifying suspicious sites and digital data stores
• Collecting and examining electronic data forensics
• Cybercrime
• A private-sector outlook for the theft of music, software, and movies

U.S. rights-holders also participated in the training, and were able to meet and strategize with Peruvian officials. In subsequent interactions, Peruvian officials were advised on matters such as search warrant strategy, charging of suspects, and best practices for seizing and examining digital devices.

Following the training, U.S. rights-holders informed the newly trained police and prosecutors about one of the most prolific digital piracy sites in the region: a Peru-based site that infringed on more than 5,000 properties belonging to U.S. copyright holders and that was attracting more than 25 million monthly visitors from throughout Latin America. Subsequently, Peruvian officials were able to seize the site and arrest the site’s operators.

Lessons learned

The IP attachés are dedicated to safeguarding the value of Americans’ creative works. Thanks to connections with local IP and law enforcement experts, and the ability to organize and coordinate this digital IP rights enforcement training session, the USPTO’s Peru-based IP attaché in this instance was able to help educate and inform Peruvian police and prosecutors about digital piracy, thereby enabling them to more effectively combat digital piracy within their own borders.

The situation

American companies pride themselves on creating innovative products and brands that they can offer to people all around the world. Encouraging other countries to open their markets to American exports of goods and establish effective IP protection and enforcement will ensure a marketplace where American IP owners have a fair opportunity for financial success.

The challenge

Counterfeiting has become a major concern for U.S. companies doing business in foreign markets. Counterfeit activity in online markets, for example, causes significant losses for U.S. trademark owners and undermines the United States’ critical comparative advantages in innovation and creativity—ultimately to the detriment of U.S. workers. Nowhere is counterfeiting more evident than in China, where the annual value of counterfeit goods produced was estimated by the U.S. Chamber of Commerce to be $396.5 billion in 2016. Moreover, a recent Chinese government survey found that more than 40% of goods purchased online have been reported as “not genuine.” Although some leading online sales platforms in China have instituted procedures to remove offerings of infringing articles, rights holders report that the procedures are burdensome and that penalties do not deter infringers. Moreover, despite some Chinese markets’ adoption of practices to limit the availability of counterfeit goods, these policies are not widely adopted, and enforcement remains inconsistent.

A major U.S. apparel and sporting goods company recently discovered that their trademarked products were being counterfeited in China. The company took measures to bring legal action against the suspected infringers in Dingyuan County, Anhui Province, but the prosecution eventually reached an impasse.

The solution

In need of help, the U.S. company contacted the IP attaché assigned to Shanghai, China. The attaché invited the company’s representatives to participate in an outreach program that brought together U.S. companies with officials of Anhui province. Subsequently, a judgment was entered against the counterfeiters, finding them guilty of counterfeiting the registered trademarks of the U.S. company, sentencing them to significant jail time, and requiring the payment of substantial monetary penalties.

Lessons learned

Counterfeiting is an issue that IP attachés encounter frequently. If a practitioner has a client that is having difficulties with counterfeiting and they are unable to enforce their IP rights in a given country or region, the IP attachés can help. They are well aware of legal and procedural nuances in their respective regions, and U.S. practitioners and rights holders can use this knowledge to their advantage in navigating foreign IP and administrative terrain.

The situation

U.S. companies sometimes enter into disputes with foreign entities over intellectual property (IP) and culture. Respecting IP is a two-way street: both U.S. entities and their foreign counterparts rely on predictable protection regimes and the ability to discuss their respective concerns in a constructive manner. 

The challenge

The IP attaché in Southeast Asia was alerted to a potential dispute between a U.S. fashion company and a local cultural organization that stemmed from the company’s motif and the use of its symbol on a new line of clothing. The cultural organization had IP-related concerns about this use.

The solution

The company contacted the IP attaché, who facilitated a conversation between the two parties by providing information on the local IP situation and contact information for local officials. Subsequent conversations allowed the two parties to negotiate terms that permitted the fashion company to proceed with its new line of clothing, while demonstrating its support for local cultural organizations.

Lessons learned 

The IP attachés can be a valuable resource for U.S. companies trying to resolve legal disputes quickly and amicably. By directly engaging with companies and foreign officials and organizations, the IP attaché in this instance helped both the U.S. company and the local cultural organization avoid potentially costly legal fees and reach a resolution that supported a mutually beneficial outcome.