Title: The Role of IP Protection and the Path to

Innovation & Progress

Date: Saturday April 1, 2017

Time: 2:15 p.m. - 3:30 p.m.

Moderator

Cecilia Sanabria

Attorney

Finnegan Henderson

Panelists

Jesus Hernandez

IPR Specialist - Patent

USPTO Office of Policy and International Affairs

Bibiana Agudelo

Director of Trademarks (Former Trademark Counsel for LatinAmerica with

PepsiCo)

OlarteMoure

Jose Sariego

Attorney

Bilzin Sumberg Baena Price & Axelrod LLP

Tab 1 – Biographies or CVs

Cecilia Sanabria

901 New York Avenue, NW Washington, DC 20001-4413

+1 202 408 4000Fax +1 202 408 4400

cecilia.sanabria@finnegan.com

Areas of Practice Patent Litigation ITC Section 337

Patent Portfolio Management, Monetization, and Transactions

Patent Office Trials IPR, PGR, and CBM

Patent Trial

Industry Focus Aerospace, Aviation, and Unmanned Aerial Systems

(UAS) Digital Health

Electrical and Computer Technology Industrial Manufacturing

Bar and Court Admissions District of Columbia

Virginia

Education Georgetown University Law Center

J.D., cum laude, 2009

University of Florida B.S., Mechanical Engineering, cum laude, 2005

Languages Spanish

Cecilia Sanabria Associate Cecilia Sanabria focuses her practice on patent litigation and client counseling in the mechanical, industrial, and electrical fields. She represents clients before U.S. district courts and the U.S. International Trade Commission (ITC). Her litigation experience spans the pre-trial, discovery, trial, and post-trial phases of litigation, and includes arguing motions in open court and examining witnesses in jury trials. She manages fact discovery, drafts motions and legal briefs, and works with fact and expert witnesses. Ms. Sanabria also works with various aspects of patent prosecution and U.S. Patent and Trademark Office (USPTO) proceedings, including inter partes reviews.

Ms. Sanabria devotes a portion of her time to pro bono matters. She worked on landlord-tenant disputes through the firm’s work with the D.C. Bar, and has represented criminal defendants in the Supreme Court of Virginia.

While obtaining her engineering degree, Ms. Sanabria worked for General Electric and was involved in engineering design in the area of aircraft engines as well as technical sales of medical systems.

Highlights ● Kaneka Corp. v. SKPI (C.D. Cal.). Defends SKPI against charges of patent

infringement on its polyimide films.

● Alfdex and Alfa Laval v. PACCAR, Inc. and Hengst SE & Co. (N.D. Ill.).Represented Alfa Laval in the successful enforcement of patents directed toconical-disc separators.

● U.S. Philips Corp. v. Hewlett-Packard Co. (E.D. Va.). Represented Philips inasserting MPEG technology patents against Hewlett-Packard’s media player andcomputer products.

● HTC Corp. v. Apple, Inc. (D. Del.) and Certain Portable Electronic Devices andRelated Software, 337-TA-721 (ITC). Represented HTC in enforcing its patentrights against infringing iPhones, iPads, and iPods.

● AVS v. Hyundai and Kia (E.D. Tex., E.D. Mich.). Defended Hyundai and Kiaagainst charges of patent infringement regarding Bluelink and UVO systems andairbag systems.

● Certain Portable Electronic Devices, 337-TA-721 (ITC). Represented HTCagainst Apple in a high-profile investigation involving power management andgraphical user interfaces of mobile devices.

● LG Electronics v. Whirlpool Corp. (D.Del.). Participated in numerous LGlitigations against Whirlpool involving refrigerator technology.

Professional Recognition ● Recognized as a Washington, D.C. "Rising Star" in Intellectual Property

Litigation, Super Lawyers published in Thomson Reuters, 2014-2016.

Professional Activities ● Hispanic National Bar Association (chair of IP section, 2015-2016; chair of

Midyear Corporate Counsel Conference Awards Committee, 2014;co-chair of Midyear Corporate Counsel Conference CLE Planning Committee,2013-2014)

● Hispanic Bar Association of the District of Columbia

● American Bar Association

Select Publications ● Coauthor. "Patentee's Monetary Recovery from an Infringer—A Revisit," Journal

of the Patent and Trademark Office Society, Dec. 2016.

● Coauthor. "Alternative Dispute Resolution for Patent Cases: The E.D. Tex., theN.D. Cal., and the ITC," Intellectual Property & Technology Law Journal, July 1,2015.

● Coauthor. "Litigation at the International Trade Commission: Considerations If the Complainant Relies on a Licensing Domestic Industry," Imp & Exp Executive Magazine, May 2012.

Cecilia Sanabria

901 New York Avenue, NW Washington, DC 20001-4413

+1 202 408 4000 Fax +1 202 408 4400

cecilia.sanabria@finnegan.com

2

BIBIANA AGUDELO Calle 108 No. 67-58, Bogota, Colombia

(57) 3112778743. ­ Bibiana.agudelo@olartemoure.com

BAR ADMISSIONS Republic of Colombia LEGAL EXPERIENCE Trademarks Director, Olarte Moure & Asociados , Bogota, Colombia August 2016- Present Head of trademark prosecution practice, involvement in trademark, copyright litigation and enforcement practices. Trademark Counsel for Andean, C. America and Caribbean Regions PepsiCo, Inc, Mexico, DF.. Sept 2013 – July 2016 Management of trademark portfolio, trademark prosecution and enforcement in relevant jurisdictions Law Clerk, Venable LLP, New York, New York September 2011 – July 2013 U.S. and worldwide trademark portfolio management, management of enforcement actions worldwide as in-house counsel for Playboy Enterprises International, Inc.; worldwide clearance searches; drafting of coexistence and license agreements, license recordation worldwide; advice in UDRP proceedings and domain name matters. Senior IP Specialist, Baker & McKenzie LLP, New York, NY April 2008 – September 2011 U.S. trademark prosecution (management of Unilever’s US trademark portfolio); drafting of agreements and documents filed with the USPTO and TTAB); coordination of foreign trademark prosecution; preparation of due diligence reports, participation in trademark litigation proceedings in Latin America. Antitrust Specialist, Crowell & Moring LLP, Washington, D.C. March 2006 – March 2008 Coordination of pre-merger activity for $67 billion AT&T-Bellsouth merger; $4 billion Harcourt-Houghton Mifflin merger and $2 billion Harcourt Assessment –Pearson merger; oversaw team of over 100 monitoring legal counsel; participation in trade association practice; client development. IP Specialist, Ener1 Group, Inc., Ft. Lauderdale, FL April 2005 – Nov. 2005 Drafting of technology licensing agreements, video game developing and distribution/license agreements; preparation of due diligence reports and documents for corporate deals(mergers and acquisitions); maintenance of corporate books; supervision of U.S. IP assets for Ener1 Group, Inc. and related companies (Nival Interactive, Inc., Splinex Technology, Inc., EnerSoft, Inc., EnerLab, Inc). IP Specialist, Kluger, Peretz, Kaplan & Berlin, P.L., Miami, FL Mar. 2004 – Mar. 2005 U.S. and foreign trademark prosecution; drafting of coexistence and license agreements. IP Specialist, McHale & Slavin, P.A., Palm Beach Gardens, FL Oct. 2003 – Mar. 2004 U.S. and foreign trademark prosecution; drafting of agreements; advice on copyright protection; patent litigation.

Senior Associate, Baker & McKenzie, Bogota, Colombia June 1997 – Feb. 2003 Trademark prosecution under Andean Community law, drafting of briefs in opposition, cancellation actions, nullity actions before the Council of State (Colombian Supreme Court for Administrative matters); preparation of license, assignment and co-existence agreements; advice on domain name protection and recovery through UDRP proceedings; edition of law firm publications; client development. Intern (as associate of Baker & McKenzie, Colombia) at Frito Lay, Inc., Plano, TX (Aug. 2000 – Feb. 2001) Coordination of foreign trademark prosecution.

EDUCATION Franklin Pierce Law Center, Concord, NH, L.L.M. in Intellectual Property July 2000 Courses in: U.S. and International Trademark and Deceptive Practices Law, U.S. and International Copyright and Patent Law, Entertainment Law, IP Licensing, Copyright Media Licensing, International Economic Regulations, E-Commerce, Contracts, Legal Research and Writing. Universidad del Rosario, Bogota, Colombia, Law Degree December 1999 PROFESSIONAL ASSOCIATIONS Associate member of INTA, Associate member of Inter American Association of Intellectual Property (ASIPI) LANGUAGES AND COMPUTER SKILLS Fluent in English and Spanish (Licensed translator in Colombia); some knowledge of Japanese (attended high-school in Japan). Knowledge of Lexis-Nexis, Westlaw, Ringtail, SAEGIS, TM management systems CPI, Pattsy, WEBTMS.

Bibiana Agudelo is a Colombian lawyer from Universidad del Rosario in Bogota, Colombia, with an LLM in Intellectual Property from Franklin Pierce Law Center (today, University of New Hampshire). She is Director for Trademarks at OlarteMoure, a 150+ person firm focused on IP, Competition, Regulatory and Compliance law with offices in Bogota, Medellin, Barranquilla and Bucaramanga, Colombia. She joined the firm on September 1, 2016 after being away from Colombia for 13 years. Bibiana’s trademark practice extends back 20 years and has covered the US, the entire Latin America, and the rest of the world. She was previously trademark counsel for the Andean, Central America and Caribbean regions at PepsiCo, Inc., managing a trademark portfolio of approximately 9,000 marks, from Mexico City. Before that, she worked for various law firms in the US Northeast, including Venable, Baker & McKenzie and Crowell & Moring. She has managed large trademark portfolios in the US for companies such as Unilever (at Baker & McKenzie, NY), and the world trademark portfolio for Playboy Enterprises International, Inc. (approximately 10,000 marks) from Venable LLP, NY.

Jesus J. Hernandez Patent Attorney

Jesus J. Hernandez is a Patent Attorney at the Office of Policy and International Affairs (OPIA) within the U.S. Patent and Trademark Office (USPTO). OPIA is responsible for providing legal and policy advice to the Under Secretary and Director of the USPTO and to other Executive Branch agencies regarding domestic and international IP-related matters. As a member of OPIA, Mr. Hernandez’ primary responsibility is assisting with the formulation of US patent policy in Latin America. Mr. Hernandez has facilitated IP working groups within the US-Brazil Commercial Dialogue and the North American Competitiveness Workplan. He has also co-led discussions between the USPTO and various Latin American IP Offices on collaborative efforts, such as the Patent Prosecution Highway (PPH) program. Mr. Hernandez has over eight years of experience in

patent law. He earned his Juris Doctorate degree from George Mason University, as well as his Bachelor’s degree in Electrical Engineering from Morgan State University. He studied law in South America as a Fulbright Scholar under the auspices of the U.S. Department of State. Mr. Hernandez is a member of the Virginia bar and the USPTO patent bar.

www.bilzin.com | Bilzin Sumberg Baena Price & Axelrod LLP 1

JOSE SARIEGOjsariego@bilzin.com P: 305.350.7230 | F: 305.351.2294

Get to Know Jose Jose is an international media, entertainment, and transactional lawyer with extensive industry experience unique to South Florida. He was General Counsel of HBO Latin America and head of Business & Legal Affairs for Telemundo Network, and has negotiated and closed numerous multimillion-dollar domestic and international deals involving content development, acquisition, production, licensing, and distribution, as well as above-the-line talent agreements.

Fluent in Spanish and proficient in Portuguese, Jose regularly handles transactions both in the U.S. and globally for domestic and international clients. In addition to representing major media and entertainment companies, he has negotiated and closed multi-million dollar mergers and acquisitions and transactional matters in several other industries, including telecom and technology, as well as handled corporate finance transactions for private and public companies. He also has been Secretary to several Boards of Directors; served as Compliance Officer for two companies; headed the Government Relations and Anti-Piracy function for HBO Latin America; and managed litigation around the world.

Q&A Why should a client hire you as opposed to another lawyer with a similar practice? As the lead lawyer for three major companies for more than 20 years, I know the challenges and pressure that in-house legal departments face and what they expect from their outside lawyers. I understand the mindset of busy executives, their concerns, and what they face day to day. I also have a unique insider's perspective of the media and entertainment business, having led the business affairs function of two international media and entertainment companies. I have handled not just in-bound international transactions but have extensive experience closing deals throughout Latin America and elsewhere. I have built a broad network of international contacts, and I am intimately familiar with the intricacies of foreign transactions, both from a legal and as importantly from a practical point of view.

What is keeping your clients up at night and how are you helping address those challenges? The revolution brought by the Internet is wreaking havoc on nearly every industry today. This is especially true for media and entertainment companies, as well as telecom and technology businesses, and we’re just seeing the tip of the iceberg. More change is coming, at an accelerating pace. I teach Media and Entertainment Law in the Digital Age at the University of Miami Law School, and every semester the paradigm shifts several degrees. It is a challenge to stay current, and you have to constantly re-invent your view of business models and

Practice Focus Corporate

Education University of Michigan, J.D., cum laude, 1981

University of Florida, B.S., 1977

Languages Spanish

Portuguese

Admissions Florida

JOSE SARIEGO Partner

JOSE SARIEGO

www.bilzin.com | Bilzin Sumberg Baena Price & Axelrod LLP 2

how these seismic shifts affect established legal principles and the delivery of legal services. It keeps me young and connected to this new generation of creators and entrepreneurs.

What did you do before becoming an attorney? I was a professional journalist with the Miami Herald before I became an attorney, and I use that training every day — the analytical skills, the ability to communicate effectively and efficiently, and how to get to the point quickly and succinctly. I still read a number of newspapers every day - only now I do it on-line.

Selected Highlight Jose is a fourth degree black belt in Taekwondo and likes to relax by breaking bricks and boards with his hands and feet.

Experience $300 Million Chapter 11 Restructuring of Spanish Language

BroadcasterRepresentation of a Spanish language broadcaster in a $300 million Chapter11 restructuring, including a $20 million credit facility.

$200 Million High Yield Bond Offering by TelecommunicationsContractorRepresentation of a U.S. public international telecom contractor in a public$200 million high yield bond offering.

$150 Million in Vendor Financing Facilities for Telecom ContractorRepresentation of U.S. public international telecom contractor in providing$150 million in vendor financing facilities to telecom clients.

$150 Million Cash Flow Based Credit Facility for TelecommunicationsContractorRepresentation of a U.S. public international telecom contractor in securinga $150 million cash flow based credit facility from a syndicate of banks.

$125 Million Equity Offering for Telecommunications ContractorRepresentation of a U.S. Public International Telecom Contractor in a $125million equity offering.

$125 Million Asset Based Credit Facility for TelecommunicationsContractorRepresentation of a U.S. public international telecom contractor in securinga $125 million asset based credit facility from a syndicate bank.

$115 Million Term Loan for Diversified Insurance CompanyRepresentation of a diversified insurance company in an issuance of $115million term loan.

$100 Million Global Securities Offering by Mexican Financial InstitutionRepresentation of a Mexican financial institution in a $100 million globalsecurities offering.

$100 Million Initial Public Offering and $180 Million Secondary Offeringby Insurance CompanyRepresentation of a U.S. life and casualty insurance company in a $100million initial public offering and $180 million secondary offering.

$90 Million Multi-Year International Soccer Rights Licensing DealRepresentation of a U.S. Spanish-language broadcast television network ina $90 million multi-year international soccer rights licensing deal.

JOSE SARIEGO

www.bilzin.com | Bilzin Sumberg Baena Price & Axelrod LLP 3

$75 Million Preferred Stock Offering for National Savings and Loan Holding Company Representation of a national savings and loan holding company in $75 million public preferred stock offering.

$60 Million Private Stock Acquisition of Spanish-Language Publishing Company Representation of a U.S. media company in a $60 million private stock acquisition of a Spanish-language publishing company.

$40 Million Purchase and Subsequent $52 Million Divestiture of Spanish Telecom Contractor Representation of U.S. public international telecom contractor in the $40 million purchase and subsequent $52 million divestiture of Spanish telecom contractor with operations in Spain, Argentina, Chile and Peru.

$50 Million Purchase of Telecommunications Contractor Representation of a U.S. public international telecom contractor in a $50 million purchase of telecommunications contractor.

$50 Million Debt Restructuring of Pay Television Programmer Representation of a Latin America pay television programmer in a $50 million debt restructuring in connection with client bankruptcy and subsequent negotiation of five year, $100 million program license agreement.

$30 Million Private Stock Sale of Health Maintenance Organization Representation of a health maintenance organization in a $30 million private stock sale to a national health care organization.

$30 Million Asset Sale of Elevator Distributor Representation of a domestic elevator distributor in a $30 million asset sale to a national elevator manufacturer.

$30 Million Investment and Build-out of Wireless Network in Paraguay with Subsequent $45 Million Sale Representation of a U.S. public international telecom contractor in a $30 million investment and build-out of a wireless network in Paraguay with subsequent $45 million sale.

$30 Million Investment in Brazilian Telecom Contractor Joint Venture with Subsequent Buy-out of Joint Venture Partner Representation of a U.S. public international telecom infrastructure contractor in a $30 million investment in a Brazilian telecom contractor joint venture with subsequent $10 million buy-out of joint venture partner.

$25 Million Investment in and Subsequent Sale of Interest in Ecuadorian Wireless Company Representation of a U.S. public international telecom contractor in a $25 million investment in an Ecuadorian wireless company and subsequent sale of interest to major Mexican telecommunications company.

$20 Million U.S. Virgin Islands Telephone Company Stock Acquisition Representation of a U.S. telecom company in a $20 million U.S. Virgin Islands telephone company stock acquisition.

$18 Million Investment in Pay Television Operator in Argentina and Subsequent Bankruptcy Re-organization Representation of a U.S. public international telecom contractor in an $18 million investment in a pay television operator in Argentina and subsequent bankruptcy re-organization.

JOSE SARIEGO

www.bilzin.com | Bilzin Sumberg Baena Price & Axelrod LLP 4

$15 Million Golf Course Acquisition by Japanese DeveloperRepresentation of a Japanese developer in a $15 million Florida golf courseacquisition.

International Licensing and Distribution of Pay Television ChannelsRepresentation of a U.S. broadcast television network and an internationalpay television programmer in the licensing and distribution of linear and on-line basic and premium pay television channels to major cable and satellitepay television operators throughout Latin America, Brazil and the Caribbean.

Negotiation of Talent, Participant and Other Agreements with Actors,Writers, Producers and Other Participants in Various Television ShowsRepresentation of a U.S. broadcast television network and its affiliated paytelevision programmer and an international pay television programmer in thenegotiation and documentation of agreements with above-the-line and otherparticipants in scripted and unscripted television programs.

International Licensing and Distribution of Multiple Television ShowsRepresentation of a U.S. broadcast television network and its affiliated paytelevision programmer and an international pay television programmer in thelicensing and distribution of multiple scripted and unscripted televisionprograms worldwide.

Acquisition, Development, Licensing and Production of MultipleTelevision ShowsRepresentation of a broadcast television network and affiliated pay televisionprogrammer and an international pay television programmer in thedevelopment and production of multiple telenovelas and other scriptedprograms, reality and other unscripted programs, award shows andcompetition shows.

Negotiation of Multi-Year, Multi-Million Dollar Film and Series LicensesRepresentation of a Latin American pay television programmer in thenegotiation of several multi-year, multi-million dollar film and series licenseswith television networks, major Hollywood studios and independentproducers and distributors.

Professional and Community Involvement University of Florida Center for Latin American Studies, Alumni Board

President, 2011 - Present Regional Counsel Group of International Corporations, Co-Chair, 1998 -

Present Hispanic National Bar Association, Member, 2016 American Bar Association, Member, 2016 Association of Public Corporations, President and Member of Board of

Directors, 1997 - 2002 Greater Miami Chamber of Commerce, Board member, 2001 - 2002 United Way of Miami-Dade, Co-Chair - Legal Division, 1999 - 2001 Greater Miami Chamber of Commerce, Chairman of Hispanic Market

Committee, 1993 - 1994

JOSE SARIEGO

www.bilzin.com | Bilzin Sumberg Baena Price & Axelrod LLP 5

Speeches & Publications Speaker, "Media & Entertainment in the Digital Age," Association of

Corporate Counsel's 7th Annual CLE Conference, Hollywood, FL,September 30, 2016

Speaker, "International Tax Planning for Artists, Entertainers & Athletes,"Bilzin Sumberg's International Tax Breakfast Series, Miami, FL, June 01,2016

Author, "Patent Office Decision: Telling It Like It Is," Daily Business Review,May 10, 2016

Author, "Monkey See, Monkey Sue: The Issues In PETA Selfie Case,"Law360, April 14, 2016

Author, "Lenz Go Crazy! Uncertain Landscape for Fair Use Under CopyrightLaw," Daily Business Review, March 31, 2016

Adjunct Professor, "Media & Entertainment Law in the Digital Age,"University of Miami School of Law, Coral Gables, FL, March 08, 2016

Conference Co-Chair and Moderator, "Content without Borders," Media LawResource Center and University of Miami's Legal Issues ConcerningHispanic and Latin America Media, Coral Gables, FL, March 07, 2016

Panelist, "Law," University of Florida's Latin American Career Workshop,Gainesville, FL, October 23, 2015

Moderator, "Cross Border Copyright, Licensing and Distribution," Media LawResource Center and University of Miami's Legal Issues ConcerningHispanic and Latin American Media, Miami, FL, March 09, 2015

Moderator, "Anti-Piracy and Digital Copyright Law Cross Borders," MediaLaw Resource Center and University of Miami's Legal Issues ConcerningHispanic and Latin American Media, Miami, FL, March 11th, 2013

Speaker, University of Florida's Latin American Business Symposium andCareer Panel, Gainesville, FL, March 25, 2011

Speaker, "HBO and The New Media Revolution in Latin America," Universityof Miami School of Law's Entertainment Law Symposium, Coral Gables, FL,February 21, 2009

Speaker, "HBO and The New Media Revolution in Latin America," Universityof Florida's Latin American Business Symposium and Career Panel,Gainesville, FL, November 07, 2008

Author, "Stranger in a Strange Land: The Lawyer as Translator in a GlobalWorld," March 07, 2008

Speaker, Inter-American Bar Association's Annual Conference, Mexico City,Mexico, June 13, 2007

Author, "Marketing to In-House Counsel," Florida Defense Lawyer’sAssociation Defense Manual, March 05, 2006

Author, "Depositions from the Client’s Perspective," Litigation Magazine,March 01, 2006

Author, "The Challenges of International Litigation: A Non-Litigator'sPerspective," Tulane Latin America Law Institute, September 16, 2006

Author, "General Counseling in the New Millennium," Lawyering in Times ofChange: A Regional Counsel's Perspective, March 07, 2002

Tab 2 – Course Materials (articles, publications, other materials)

Tab 3 – PowerPoint

The Role of IP Protection in Latin America's Path to Innovation & Progress:

Developments in Patent LawJesus J. Hernandez

Patent Attorney Office of Policy and International Affairs

1

8th Annual Corporate Counsel ConferenceHispanic National Bar Association (HNBA)Miami, FLMarch 30-April 2, 2017

USPTO Organization

2

Commissionerfor Patents

Commissionerfor Trademarks

Chief Policy Officer and Director for

International Affairs

Chief Communications

Officer

Chief Information

Officer

Director of EEO

& Diversity

General Counsel

Patent Public Advisory

Committee

Patent Trial andAppeal Board

Trademark PublicAdvisory

Committee

Trademark Trial andAppeal Board

ChiefAdministrative

Officer

Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office

ChiefFinancialOfficer

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

The OPIA Latin America and Caribbean Team

3

• Cross-Sectional / Multi-disciplinary team:• Patents• Trademarks• Copyrights• Enforcement

• Three Dedicated Attaches

• 4 Distinct Regions:• Mexico and Central America• Caribbean• Andean Region• Southern Cone (MERCOSUR)

• Scale: 20+ Countries

• Lean, Agile, and Collaborative

Mexico City

Lima

Rio de Janeiro

The Patent Prosecution Highway (PPH)

4

USPTO PPH Agreements:Global/IP5 PPH

5

USPTO PPH Agreements:Bilateral PPH

6

Regional LATAM PPH Agreements:Pacific-Alliance PPH

7

• Background: IP Offices announced a collaborative initiative on October 8, 2015. Three initiatives:

• (i) streamlining the patent examination process; • (ii) exploring simplification and harmonization of

trademark processes; and • (iii) launching a technology transfer platform.

• Launch: Pacific Alliance PPH announced on July 2016, at the 11th Summit of the Pacific Alliance in Puerto Varas.

Regional LATAM PPH Agreements:PROSUR PPH

8

• Background: In 2011, the IP offices of many MERCOSUR member countries launched a pilot project for regional cooperation in IP known as PROSUR. In 2015 and 2016, the IP Offices explored a regional PPH.

• Launch: Launched on Sept. 20, 2016. Intended to include Colombia, Argentina, Brazil, Chile, Ecuador, Paraguay, Peru, and Uruguay.

Regional Highlights:Mexico and Cuba

9

• Mexico:• CADOPAT• The North American Competitiveness Workplan

• Cuba: • Established Patent presence • Normalization of US-Cuba Relations• USPTO and OCPI Engagement

• Future Engagement:• Pending…

Regional Highlights:Argentina, Brazil, Chile

10

• Argentina: • New Leadership: Director Damaso Pardo• Addressing Backlog: Accelerated Examination; PPHs• PCT Accession?• USPTO-INPI Arg. Engagement

• Brazil:• Addressing Backlog: 60 new examiners; PPHs• ANVISA “Prior Consent” Provision• USPTO-INPI Br. Engagement

• Chile: • PCT International Searching Authority• New Tools (WIPO CASE, INAPI Conecta, INAPI Analiza)• Cooperative Patent Classification (CPC)

Thank YouJesus J. Hernandez

Patent AttorneyOffice of Policy and International Affairs

jesus.hernandez@uspto.gov

11

Trademarks in Latin America

Intellectual Property

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• IP refers to creations of the mind, such as inventions; literary and artistic works;

designs; and symbols, names and images used in commerce. • Distinction between “Propiedad Intelectual” and “Propiedad Industrial” • WIPO - global forum for intellectual property services, policy, information and

cooperation. Self-funding agency of the United Nations, with 188 member states. Mission: lead the development of a balanced and effective international intellectual property (IP) system that enables innovation and creativity for the benefit of all. Mandate, governing bodies and procedures are set out in the WIPO Convention, which established WIPO in 1967.

• World IP Day- April 26 – celebrated to promote discussion of the role of intellectual property in encouraging innovation and creativity.

Protection and Enforcement

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Types Actions

• Patent • Industrial Design • Copyright • Trademark • Denominations of origin • Domain Names

• Prosecution (Oppositions/Cancellation Actions)

• Infringement actions vs. Counterfeiting

• Cybersquatting - Uniform Domain Name Dispute Resolution Policy (UDRP)

International Treaties

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Copyrights • Berne Convention for the Protection of Literary and

Artistic Works • Brussels Convention Relating to the Distribution of

Program-Carrying Signals Transmitted by Satellite • Geneva Convention for the Protection of Producers of

Phonograms Against Unauthorized Duplication of Their Phonograms

• Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled * NOT IN FORCE

• Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations

• WIPO Copyright Treaty (WCT) • WIPO Performances and Phonograms Treaty (WPPT)

Patents - Patent Cooperation Treaty / Tratado de Cooperación en materia de Patentes (PCT) Industrial Design- The Hague System for the International Registration of Industrial Designs provides a practical business solution for registering up to 100 designs in over 65 territories through filing one single international application

Appellations of Origin The Lisbon System for International Registration of Appellations of Origin in the contracting parties to the Lisbon Agreement through a single registration. Registrations can be searched through the Lisbon Express database.

Main Trademark Treaties

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• General Inter-American Convention for Trademark and Commercial Protection. Contracting parties: Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panamá, Paraguay, Peru, United States of America. http://www.wipo.int/wipolex/en/other_treaties/parties.jsp?treaty_id=353&group_id=21

• Paris Convention for the Protection of Industrial Property. Contracting parties: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/paris.pdf

• Madrid Union (Madrid Agreement and Protocol). Contracting parties: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

• Nice Agreement concerning the international Classification of goods and Services for the Purposes of the Registration of Marks. (No encontré a los estados parte)

• Convention of 5 October 1961 Abolishing the Requirement of Legalization for Foreign Public Documents. https://www.hcch.net/en/instruments/conventions/status-table/?cid=41

• Decisión 486/2000, establishing the common Industrial Property Regime. Contracting parties: Bolivia, Colombia, Ecuador y Perú.

Andean Community

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• The Andean Community is a regional organization created in 1969 by the Cartagena Agreement with the purpose of developing an economic, cultural and social integration. Bolivia, Colombia, Ecuador and Peru are member countries.

• Along with Mercosur, the Andean

Community is the most important economic block in South America.

Adequate Protection of Trademarks

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• Choosing good, protectable marks • Protecting those marks as early and as thoroughly as possible • Enforcing our rights against others

• Protecting those s as EARLY and as thoroughly as possible

Word Marks

Design Marks

3D Marks

Word & Design Marks

Smell, Sound and

Taste Marks

Color Marks

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RECENT CASES

Touch/Tactile/Texture Marks OLD PARR CASE

http://sic.gov.co/noticias/superindustria-concede-el-registro-de-la-marca-de-color-rosado-a-postobon-para-identificar-gaseosas

MARCAS TÁCTILES 242-IP-2015

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TEXTURA SUPERFICIE OLD PARR Marca Táctil: “En las denominadas marcas táctiles es la superficie lo que da lugar a su reconocimiento y protección, por ejemplo, por tratarse de una textura particular y reconocible. Para ser susceptible de protección por registro de marcas, dicha textura debe servir para informar acerca del origen empresarial del producto que se pretende distinguir. Una textura determinada podrá ser protegida como signo distintivo si resulta arbitraria y particular en relación con el producto que distingue; (…)”

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SUGGESTIVE SMARTFOOD for popcorn COPPERTONE for suntan oil ROACH MOTEL for insect traps

Strongest Weakest Marks ARBITRARY / FANCIFUL KODAK for photography supplies HÄAGEN-DAZS for ice cream APPLE for computers

SUGGESTIVE SMARTFOOD for popcorn COPPERTONE for suntan oil ROACH MOTEL for insect traps

DESCRIPTIVE RICE Krispies for Cereal SPICY RANCH sauce TEXAS BBQ sauce GENERIC Mani Saladito Chocolate rico

Tab 4 – Attendee Takeaway

On average • Fewer office actions• Higher first action allowance rate• Higher grant rate

Lower• RCE filing rates• Appeal rates• Overall pendency

faster IP rights reduced costs

Patent Prosecution Highway (PPH)

For more information, visit http://bit.ly/USPTO-PPH

What is the Patent Prosecution Highway? PPH provides a system of work sharing among many patent offices.  When you have allowable claims from one office, you can fast track those claims in other participating offices.

COST SAVINGS EXPEDITED EXAMINATION RAPID PORTFOLIO BUILDING

Second O�ceExamination

EarliestFiling

First O�ceExamination

Allowance

EarlierO�ce

Examination

LaterO�ce

ExaminationPPH Filing