IP Attachés: Providing Services around the World to IP Practitioners and Their Clients

• Author: Dominic Keating
• Position: Dominic Keating is the director of the IP Attaché Program at the USPTO. He provides legal and policy direction to IP attachés based in Brazil, India, China, Switzerland, Thailand, Kuwait, Belgium, and Mexico. From 2010 to 2011, he was a patent attorney in the USPTO's Office of Policy and External Affairs, and led a team of 12 attorneys to...
• Pages: 32-35

Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

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T he United States Patent and Trademark Ofce’s

(USPTO’s) intellectual property (IP) attachés serve

as a valuable resource in today’s globalized world.

IP attachés are US diplomats with IP expertise

assigned to US embassies and consulates through-

out the world. Their expertise and experience facilitate their

success by allowing them to address numerous topics, from

broad policy issues to specic problems, on behalf of prac-

titioners and US stakeholders. Consequently, the IP attachés

can be a valuable resource—to US rights holders, practitio-

ners, and their clients—by virtue of their unique knowledge,

connections, and ability to assist US stakeholders who are

facing IP-related challenges throughout the world.

IP attachés have a wealth of information available to

them. They are not limited to their own IP knowledge, but

can draw upon the USPTO’s resources and expertise. There

is a constant line of communication between the attachés

and the USPTO. The USPTO Ofce of Policy and Interna-

tional Affairs, within which the IP Attaché Program operates,

has teams of specialized patent, trademark, copyright, and

enforcement attorneys who provide additional support and

guidance to the attachés. The attachés also work closely with

other US agencies in their regions.

Information, Assistance, On-the-Ground Counsel

IP attachés can provide information to practitioners and their

clients regarding the protection, enforcement, licensing, and

understanding of IP rights throughout the world. Attachés can

assist practitioners and their clients in many ways, whether

the client is already in a foreign market or wishes to enter a

new area of the world. US stakeholders can benet from the

attaché’s knowledge of the IP environment in a host coun-

try or region. Attachés can assist rights holders in navigating

foreign legal landscapes, and may be able to provide direct

assistance with specic IP-related problems located in the

attaché’s region of responsibility.

Attachés are resources who often listen and respond to

questions or concerns that US stakeholders have about pur-

suing an investment in a particular area of the world. For

example, recently in Brazil, a major US fashion label that

manufactures shoes for export to the United States wished

to open retail stores in Brazil and make its brand available to

Brazilian consumers. However, the US company was con-

cerned about the possibility of counterfeit products being sold

locally in Brazil. The IP attaché in Rio de Janeiro met with

the company’s import-export director to provide information

and guidance on how the company could enforce its IP rights

under Brazilian law. The attaché’s information allayed the

company’s concerns about counterfeiting, and it subsequently

undertook the successful launch of its retail stores in Brazil.

IP attachés are also there to counsel rights holders on

options for enforcing IP rights in each country or region.

Every government has its own approach to stakeholder

engagement and enforcement. Certain governments prefer

that rights holders work through local counsel, while other

governments are eager to engage with international compa-

nies directly.

This on-the-ground knowledge worked to the advantage of

another US rm, a Tennessee-based furniture company that

manufactured its products in China. The company’s former

original equipment manufacturer in China had obtained 13

Chinese design patents, and used them to block the compa-

ny’s other manufacturers from making and exporting products

for the US company. The IP attaché in Guangzhou, China,

met with the company’s CEO and provided information

and guidance on China’s patent invalidation process and the

workings of its IP judicial system. The attaché also provided

suggestions on how the company could work with relevant

IP ATTACHÉS

By Dominic Keating

PROVIDING SERVICES AROUND THE WORLD

TO IP PRACTITIONERS AND THEIR CLIENTS