W|N International Intellectual Property Prosecution

by Jon Richards

W|N has years of experience assisting clients in their efforts to secure patent and other intellectual property (IP) protection in the international prosecution arena. We provide a full range of international intellectual property services for U.S. and overseas clients desiring protection outside the U.S., as well as overseas clients desiring to obtain U.S. protection. W|N works with an extensive network of IP law firms located in virtually every country around the world.

W|N also represents a large number of overseas clients before the U.S. Patent & Trademark Office (USPTO). These clients include IP law firms and agents in other countries who seek our assistance in prosecuting patent and trademark applications at the USPTO on behalf of their clients, as well as direct representation of overseas corporations in connection with their U.S. patent and trademark IP portfolios.

We also have a growing IP licensing, enforcement, and litigation practice in countries outside of the United States. Our attorneys have overseen and managed IP litigation and licensing efforts in established and emerging markets in Europe, Asia, Canada, Latin America and other areas of the world. Twenty three of our attorneys are proficient in a second language in addition to English.

Our international IP experience permits us to counsel our clients regarding the important issues that should be considered when entering overseas markets, and to assist them in developing coherent IP strategies that take into account the opportunities for protecting rights, where appropriate, in other countries, thus enhancing that aspect of their IP portfolio.

In addition, in the area of international trademark law, one of W|N's senior shareholders, Jonathan W. Richards, serves as the Chair of the Trademark Treaties and International Law Committee of the American Intellectual Property Law Association (AIPLA). In that capacity, Mr. Richards regularly represents AIPLA in proceedings of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) and the Ad Hoc Working Group on the Legal Development of the Madrid System for the International Registration of Marks at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Through these committees, Mr. Richards provides input from the perspective of U.S. trademark owners and practitioners during committee meetings concerned with developing treaties and multi-national agreements directed to trademark law and related matters. For example, Mr. Richards participated in SCT meetings concerning the Revised Trademark Law Treaty (RTLT) and the Diplomatic Conference held in Singapore in March 2006, at which the RTLT was finalized and adopted by member states of WIPO on March 28, 2006 and renamed as the Singapore Treaty on the Law of Trademarks.

W|N's International IP Prosecution Practice from 2001-2005:

• W|N Represents Clients in Over 100 Countries Outside the U.S.
  • 52 Countries in Patent Matters
  • 84 Countries in Trademark Matters
• 2,304 Patent Applications Filed Overseas in 52 Countries
• 664 PCT International Applications Filed
• 1,105 Patents Issued Overseas in 50 Countries
• 1,058 Trademark Applications Filed Overseas in 85 Countries
• 949 Trademark Registrations Issued Overseas in 87 Countries
• W|N Attorneys With International IP Experience:
  • 25 Attorneys experienced in International IP
  • 23 Attorneys speak two or more languages, representing nine languages in addition to English
  • 5 Attorneys have experience with patent oppositions in one or more Countries outside the U.S.
  • 4 Attorneys have experience with trademark oppositions in one or more Countries outside the U.S.
• Top National or Regional Offices in Which Patent Applications Have Been Filed by W|N for its Clients:
  • 362 in the European Patent Office
  • 284 in Canada
  • 278 in China
  • 219 in Japan
  • 176 in Australia
  • 163 in Mexico
  • 104 in Korea
  • 98 in Brazil
  • 69 in Germany
  • 64 in Hong Kong
• US Patent Applications Filed Per Year for Overseas Clients:
  • 146 - 2005
  • 78 - 2004
  • 100 - 2003
  • 78 - 2002
  • 103 - 2001
• Patent Clients From Countries outside the U.S.:
  • 47 Overseas patent law firms and agents
  • 11 Direct overseas clients
• US Trademark Applications Filed Per Year for Overseas Clients
  • 22 - 2005
  • 45 - 2004
  • 39 - 2003
  • 39 - 2002
  • 53 - 2001
• Trademark Clients from Countries Outside the U.S.:
  • 19 Overseas trademark law firms and agents
  • 4 Direct overseas clients

* Statistics for this article are current as of April 2006.