Going GlobalGoing Global

J. F. (Jim) ChesterJ.D. / LL.M. / CHB / CCSCHESTER/associates, pllc

Going Global

• Everyone is affected by globalization

• Technology & Globalization have leveled the international “playing field”• Increased competition• Outsourcing of services, including legal

services

• Globalization = • Increased opportunity• Increased risk

About Jim ChesterManaging Attorney, Chester/associates, pllc

Of Counsel, Klemchuk Kubasta, LLPAdjunct Professor, Baylor University School of Law

I advise entrepreneurs, start-ups and privately-held companies of all sizes in a variety of industries regarding trademark, copyright, and trade secret protection, licensing & enforcement in the US and abroad. In addition, I assist companies in international business transactions and joint ventures.  To date, I have advised clients on business deals involving almost 100 countries. I also coordinate with foreign counsel on legal projects around the world on behalf of U.S. clients, and serve as legal advisor to foreign companies doing business with or in the U.S.  Of course, to be an effective international business attorney, I must also have significant experience and expertise handling domestic business matters, including entity formations, transactions, acquisitions, contracts and other legal issues commonly faced by my clients.

My international practice also involves advising clients regarding international trade regulations, including compliance and enforcement issues involving Customs/import and export laws, ITAR, and the FCPA.  I have represented numerous clients before US Customs & Border Protection, US Department of Commerce, US Department of Defense Trade Controls, the Office of Foreign Asset Controls, the US International Trade Administration, and other state, federal and foreign governing bodies and agencies. In addition to being admitted to practice law in Texas and Washington, DC., I am a licensed US Customs Broker.

  In addition to my work at the firm, I am an adjunct professor of law at Baylor University Law School,

teaching courses on International Trade Law and International Business Transactions.  I also previously served as an adjunct professor of Business Law at the University of Dallas.

HONORS “Rising Stars Under 40,” Law & Politics Magazine published in Texas Monthly & Texas Rising Stars (2008,

2009, 2011) “AV® Preeminent” Peer Review Rating by Martindale Hubbell®  EDUCATION LL.M., International Economic Law, University of Houston School of Law, 2000 J.D., South Texas College of Law (Law Journal, Varsity Mock trial), 1997 B.S., Economics/Political Science (Double major), magna cum laude, Texas A&M University, Commerce, 1994

CREDENTIALS Licensed U.S. Customs Broker Certified Customs Specialist (NCBFAA) Admitted to practice in Texas & Washington, DC

LinkedIn Profile

The “Myth” of Private International Law

• Law - a rule of conduct or action prescribed or formally recognized as binding or enforced by a controlling authority (Webster’s Dictionary)

• No “supra-national” court or police force

• Int’l Private law exists, but not in any one source• As codified in national laws• Via contract between parties• Industry standards and customs

IBT ICLWeeks/Months Years/Decades

Private International LawThree Main Elements:

1. International Business Transactions (IBT)

2. International Trade Law (ITL)

3. International Civil Litigation (ICL)

International Business Transactions (IBT)

98% - Domestic law - (e.g., contract)

2% - International Special Considerations

Practical Currency Risk, etc.

Legal - Contracting Jurisdiction, Translations, etc. Effect of foreign laws

CISG UCC v. INCOterms2000

International Business Transactions (IBT)

International ContractsDistribution AgreementsJoint VenturesSetting up Foreign CompaniesSetting up U.S. SubsidiariesInternational IP development agreements & licenses

Outsourcing agreements

Examples of IBT Legal MattersExamples of IBT Legal Matters

International Civil Litigation (ICL)98% - Domestic law (US or other)

2% - International Aspects Special Legal Issues

Jurisdiction, etc. Deposing Foreigners - “comity” or local law

International Conventions Hague Conventions

Service of Process Taking Evidence Abroad (depositions, etc.)

Int’l Enforcement of Judgments

International Civil Litigation (ICL)

Suing ThereJurisdiction Issues International Procedural RulesSupervising Int’l Counsel

Suing HereJurisdiction Issues Collecting Foreign JudgmentsObtaining Evidence from Foreign Parties

Examples of ICL Legal MattersExamples of ICL Legal Matters

International Trade Law (ITL)Regulation of the exchange of goods and services across international borders

98% Domestic Law - U.S. or other

Key ElementsCustoms & Import LawExport Control & Trade SanctionsTrade Agreements & Preference ProgramsTrade Regulation

International Trade Law (ITL)

Customs and Import Law ProtestsRuling RequestsImport Compliance Programs Fines & Penalties Liquidated DamagesSeizures & Forfeitures Internal Audits & Compliance Assessments Cargo Security (C-TPAT, etc.)Foreign-Trade Zones

Examples of ITL Legal MattersExamples of ITL Legal Matters

International Trade Law (ITL)

Export Control & Trade SanctionsExport LicensingExport Compliance ProgramsSanctions & EmbargoesInternal Audits & Compliance Assessments

Examples of ITL Legal MattersExamples of ITL Legal Matters

International Trade Law (ITL)

Trade Agreements & Preference Programs NAFTA WTO/GATT AGOAGeneralized System of Preferences (GSP)Bi-Lateral Free Trade Agreements (Singapore, Australia, Jordan, Israel, etc.)

Examples of ITL Legal MattersExamples of ITL Legal Matters

International Trade Law (ITL)

Trade Regulation Quotas AntidumpingCountervailing Duties/Subsidies Safeguards (§201, §301, etc.) Foreign Corrupt Practices Act AntiboycottITARIP Related:

Section 337 ITC Exclusion Orders (patents) Customs IP seizures

Examples of ITL Legal MattersExamples of ITL Legal Matters

Common International Legal Issues

Do you buy products, components, or equipment from outside the US?

Do you employees or contractors outside the US provide any services to you?

Do you ever send money (wire transfer or via Letters of Credit) outside the US?

Do you sell, products or services outside the US (directly, or through agents/distributors)?

Common International Legal Issues

Do you have any foreign subsidiaries/affiliates/parents?

Do you license IP outside the US (directly, or through agents/distributors)?

Are any employees or owners/partners non-US citizens?

If you import or export, do you have a written compliance program?

Are your products/services subject to ITAR?Have you ever had any issues with Customs, the Bureau of Industry & Security, the Office of Foreign Assets Controls, or the Office of Defense Trade Controls

International Trade & International Trade & IP/Tech IP/Tech Key Overlap IssuesKey Overlap Issues

Customs Enforcement of IP RightsCustoms Enforcement of IP RightsExport Laws Export Laws

EAR & Transfers of TechnologyEAR & Transfers of TechnologyDeemed ExportsDeemed Exports

Import Laws (Undeclared Value)Import Laws (Undeclared Value)AssistsAssistsIP License AgreementsIP License Agreements

International Trade & International Trade & IP/Tech IP/Tech Key Issues - Customs Enforcement Key Issues - Customs Enforcement of IP of IP How do IP owners obtain Customs How do IP owners obtain Customs protection? protection? How does Customs enforce IP rights?How does Customs enforce IP rights?ExampleExample

““compatible with NOKIAcompatible with NOKIA” ” ““compare to “Scope”compare to “Scope”

• What is an Export?What is an Export?– Physical shipment of Physical shipment of

EAR-subject goods, EAR-subject goods, technology, or technology, or technical data outside technical data outside US Customs Territory US Customs Territory

– Downloads and emails Downloads and emails of technology and of technology and technical data outside technical data outside USUS

– ExampleExample• Software programming Software programming

or patent drafting or patent drafting in Indiain India

International Trade & International Trade & IP/Tech IP/Tech Key Issues – Export LawsKey Issues – Export Laws

What is the Deemed What is the Deemed Export Rule?Export Rule?

““Release”Release”““Technology or Technology or technical data” technical data” ““Foreign National”Foreign National”

ExampleExampleUniversity researchUniversity research

International Trade & International Trade & IP/Tech IP/Tech Key Issues - Export LawsKey Issues - Export Laws

•Common Importing Common Importing PitfallsPitfalls

•AssistsAssists•Undeclared Values Undeclared Values

•RoyaltiesRoyalties•Indirect Payments Indirect Payments

International Trade & International Trade & IP/Tech IP/Tech Key Issues - ImportingKey Issues - Importing

Email Email chester@tradelawfirm.com

Phone Phone 214.988.9248214.988.9248

Toll Free 1.877.34.WorldToll Free 1.877.34.World

Questions?Questions?