U.S. INTELLECTUAL PROPERTY ATTACHÉ, FOR THE MIDDLE
EAST AND NORTH AFRICA
In What’s your IP Strategy? GC draws attention to the UK and US governmental attachés providing IP support to companies operating outside their home country in certain key jurisdictions. In a series of web interviews, we speak to some of those attachés to find out about the IP issues on the ground where they
are – and how companies can be prepared.
L E G A L P E R S P E C T I V E
EDITOR AND FEATURES WRITER
The US attaché for the Middle East and North Africa, Aisha Salem, talks to Catherine Rodgers about some of the work she has been doing in the region.
GC: Which countries come under your remit as US attaché for the Middle East and North Africa?
Aisha Salem (AS): Algeria, Bahrain, Egypt, Iraq, Israel/Palestinian Territories, Jordan, Kuwait, Lebanon, Libya, Morocco, Oman, Qatar, Saudi Arabia, Tunisia, UAE and Yemen.
GC: Could you tell me a little bit about the US IP attaché programme?
AS: The attachés from the U.S. Patent and Trademark Office [USPTO] all have a regional focus, except for our attachés in China and Geneva.
Much of our work is in helping US companies to do business in regions that we cover by advocating with host governments for improvements to IP systems and providing information to companies that will help them to navigate those IP systems. If there are particular enforcement issues that are going on in any given country then we can help US companies to navigate those specific issues. If those issues get to a high enough profile then we can raise them with the local government – if it comes to that.
Another part of our work is international treaty compliance (either bilaterally or multilaterally), including WIPO [World Intellectual Property Organization] issues or WTO [World Trade Organization] issues. The US has FTAs [Free Trade Agreements] with five different countries in the MENA [Middle East/North Africa] region [Jordan, Israel, Morocco, Bahrain and Oman], so we have a lot of really important trading partners. We want to make sure that everyone is on the same page with IP legislation and the enforcement of those laws.
A third part is helping to co-ordinate US government efforts in providing training and building technology transfer between countries. Currently, I’m putting together a programme for local customs authorities, there’s also judicial training, there’s examination training for trademark and patent examiners - it runs the gamut, so the attachés act as the one conduit for all the different agencies that have their hand in the IP pot and have responsibilities for these regions.
GC: Are you getting a lot of approaches from US companies who are concerned about their IP rights in the region and what issues are coming up, typically?
AS: It’s primarily enforcement. There are solid IP laws in the region; for the most part the laws out here are fine. Where we run into issues is when there is either inconsistent or relatively non-existent enforcement of those laws. So that’s one of the frustrations of doing business out here.
There are issues with enforcement of trademarks and prevention of copyright piracy, primarily with software – there’s a lot of digital piracy going on. It’s definitely a problem here, but the enforcement of hard goods and legalising software use is probably higher up there on the enforcement list.
GC: Do you find that your role is quite high profile?
AS: Actually, my situation is a little bit unique. I’ve only had one predecessor, she was based in Cairo and there was about a four year gap between us. We had to relocate the position, so it’s the first time that this position has been in the Gulf. It’s been a while since there was an attaché in the region at all. I have had to get out there and make sure everyone knows who I am and that the USPTO has a presence out here again.
I’ve only been in post for about five months. Before I moved here I made multiple trips from DC out to the region, and made local government and stakeholders aware of who I was and that I would be based in the region soon. I’m still getting out to some of the countries I haven’t hit yet. But people have my number and they know how to get hold of me, and they do! So it’s good.
GC: Are there recurring issues in any of the countries within your remit that make it difficult for companies, or that make it difficult for you to help companies address their IP concerns? Are there any particular quirks?
AS: Every country is different. A lot of companies who are not used to doing business out here think that one size fits all, and that cannot not be further from the truth. Politically, in this region of the world things change a lot, so next week it could be somebody completely new who’s in charge of whatever IP issue we’re talking about at any given ministry. Every country does things differently and there is always a lot of turnover within the local governments.
GC: Which areas of IP do people have most difficulty with in the region?
AS: Trademark infringement and software piracy for the most part. When I say trademark infringement, it covers quite a bit because there are a large number of counterfeit hard goods and counterfeit pharmaceuticals out here. We not just talking handbags and watches and shoes and things like that, it’s also personal care items like shampoo and skin cream - things that can be really harmful. And there are counterfeit automobile parts, airbags and airplane parts - things that are a real danger to public health and safety. It’s not just fake Gucci bags.
Counterfeit pharmaceuticals is one of my main areas of focus right now because it’s a huge public safety issue and it’s rampant. It’s an issue everywhere in the world: rogue online pharmacies are a huge problem everywhere.
GC: Can you talk about any specific projects that you’re working on?
AS: I have a few judicial training programmes going on for judges who cover IP cases – sharing best practices. Judges and prosecutors from the US and folks from the Department of Justice come over and share with local judges and prosecutors step by step how to go through an investigation or docket management of IP cases, that kind of thing. There are a few judicial training programmes on the horizon throughout the region.
There are a couple of projects on counterfeit medicines.
There are a couple of projects concerning Customs, as well.
GC: Do you find that many companies jump into the region without proper preparation?
For sure. I would hope that GCs are aware of this, but IP rights are territorial. Some companies come in thinking that their US patents and trademarks are going to protect them over here and they don’t. Some countries have a gentleman’s agreement of honouring US patents, but they don’t have to and they can change their minds whenever they want to. There are different mechanisms that companies need to go through to get their IP protected over here. Probably the biggest and most frustrating thing for me is that some companies just don’t know.
GC: Is there any advice that you would give to those of our readers who might be considering starting to operate in your region, or even for those that already are? Can you give them any pointers?
They should be strategic about the countries that they invest their resources in to register various types of protection. For example there’s a GCC patent office [The Patent Office of the Cooperation Council for the Arab States of the Gulf], and one GCC patent covers six countries. With trademarks they don’t have such a system, so there isn’t that option and you would have to file them individually in each country. Not all countries out here have an active trademark registration system - they all have trademark offices, but some are much more efficient and have much more capacity to process those applications. So be strategic on which markets are the most important for your company and proceed in that way, because it’s not cheap. In the US, a patent application is significantly more expensive than a trademark application, and that’s not true out here. A lot of times a trademark application is a lot more expensive. Because trademarks are your brands, a lot of times they are much more important to a company’s portfolio - so it’s really something to be strategic about.