Foreign Filing Licenses: Key Considerations, First Filing Requirements, Design Patent Unique Issues, Export Controls
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on foreign filing restrictions and licenses. It will also review the export controls considerations and pitfalls in that process. The panel will discuss various countries with filing restrictions and requirements, including the U.S., China, India, and other countries. The panel will address unique issues that design patent applications face. The panel will also offer best practices for avoiding foreign filing mistakes.
Outline
- Foreign filing restrictions and requirements
- Overview
- Specific countries
- U.S.
- China
- India
- Other countries
- Design patent unique issues
- Export controls
- Best practices for avoiding foreign filing mistakes
Benefits
The panel will review these and other key issues:
- What are foreign filing restrictions and licenses?
- What rights does a foreign filing license provide?
- What constitutes "developed in China"? What are the consequences of failing to understand when a license is required for China?
Faculty
Tracy-Gene Durkin
Director
Sterne Kessler Goldstein & Fox
Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining... | Read More
Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining and enforcing IP rights, she has a deep understanding of utility and design patents, trademarks, and copyrights. Ms. Durkin has been an Adjunct Professor at George Mason University Law School and has spoken internationally on topics such as the interplay between design patents and trade dress, and protection of user interface and the user experience. She is currently a Vice Chair of the Industrial Designs Committee of IP Section of the ABA.
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Peter E. Jeydel
Partner, Sanctions & Trade Controls Group Leader
Troutman Pepper Locke
Mr. Jeydel helps clients navigate today’s increasingly complex regulatory and enforcement environment at the... | Read More
Mr. Jeydel helps clients navigate today’s increasingly complex regulatory and enforcement environment at the intersection of national security, international trade, finance, and technology. He has deep experience in export controls, economic sanctions, and related areas. Mr. Jeydel’s practice includes regulatory counseling, compliance program development and enhancement, assistance with M&A and other complex transactions, responding to government inquiries, conducting internal investigations, advising on voluntary self-disclosures, and providing robust representation in civil and criminal enforcement actions. For example, he assists with obtaining authorizations for otherwise restricted trade and investment transactions, foreign national employees with access to export-controlled technology, and other common requirements. He advises on risk assessments, know-your-customer (KYC) and due diligence best practices, contractual safeguards, jurisdiction and classification determinations for potentially export-controlled products and technologies, and many other practical compliance steps. For non-U.S. companies, Mr. Jeydel offers clear insights on the extraterritorial reach of these U.S. laws, and how they can be enforced abroad. He also assists clients seeking removal from (or concerned about possible designation on) a variety of U.S. government sanctions lists, including the Specially Designated Nationals (SDN) list, the Entity List, and others.
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Lisa L. Mueller, J.D., B.S.
Shareholder
Casimir Jones
For over 25 years, Ms. Mueller has provided strategic counsel on complex patent issues to clients in the... | Read More
For over 25 years, Ms. Mueller has provided strategic counsel on complex patent issues to clients in the pharmaceutical, biopharmaceutical, biotechnology, and chemistry sectors. She brings in-depth knowledge and extensive experience to her work, advising clients on the global patent protection, freedom to operate, and validity of blockbuster drugs they aim to produce and distribute. With a background in chemistry and biology, she provides advice on the full spectrum of global intellectual property portfolio management, including patent prosecution, opposition, and other post-grant proceedings, and diverse regulatory matters. Since 2001, she has worked closely with in-house legal departments of global pharmaceutical firms regarding their patent development and enforcement strategies. In this partnership, Ms. Mueller provides training to new in-house counsel. She meets with scientists and other business development to anticipate and resolve a wide array of problems, including navigation of FDA approval. A thought leader on pharmaceutical and biopharmaceutical patent law, Ms. Mueller frequently speaks to legal and industry groups and publishes widely.
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