Michael Mangelson has been IP Attaché at the US consulate in Shanghai since 2014. In this interview, we talk with Michael about what is the US IP attaché program and specifically his role in China.
Aaron Wininger: First off, what is the US IP Attaché program?
Michael: The United States Patent and Trademark Office’s (USPTO) Intellectual Property (IP) Attaché Program works to improve IP systems internationally. The attachés advocate to improve IP policies, laws, and regulations abroad, which benefits the host country as well as U.S. businesses and stakeholders.
Aaron: How about more specifically in China?
Michael: I work closely with U.S. companies on IPR protection and enforcement issues and coordinate with U.S. government agencies and China counterparts to resolve IP concerns, promote U.S. IP policy in China, and encourage effective IP protection and enforcement in China. This includes assisting U.S. businesses on IPR issues in China, advising officials at all levels of the U.S. government on China’s IP system, conducting training activities and advising the Chinese government on U.S. IP law and policy, and helping to secure high IPR standards in trade agreements and China’s laws and monitoring implementation of these provisions.
Aaron: How do you help U.S. businesses in China?
Michael: I assist hundreds of U.S companies on a wide variety of cases ranging from strategic planning for protecting and enforcing IP in China to advocacy on behalf of rights holders facing irregular judicial processes and Section 301 IP abuses in China. Many of these rights holders are smaller companies that are new to China and are very appreciative or our services, which on a tight budget, they may not be able to receive otherwise. I was happy when one company commented in a PTO survey that “Mike is wonderful! Responsive, knowledgeable and resourceful. I would recommend the IP Attaché services and encourage more brand owners to be involved from now on for certain!”
Aaron: Can give us some specific examples?
I’ll give an example of a company struggling with IP problems that are common among most U.S. rights holders in China. It involves a small U.S. company that designs and produces eco-friendly pet toys in the U.S. for sale around the world. The company visited our office in Shanghai to discuss problems relating to protecting its trademarks and combatting counterfeits, particularly on Chinese e-commerce platforms. Its trademark was being challenged by a Chinese counterfeiter that filed an application to cancel the company’s Chinese trademark registration. The company also discovered counterfeits of its pet toys available for sale on Alibaba’s Taobao e-commerce platform. The products looked authentic, which confused many consumers, but tests showed that the products were made of inferior materials that were hazardous to pets. Our meeting included a discussion of measures and best practices for protecting and enforcing IP rights in China, defending trademark cancellation proceedings, and how the company could work with its China service providers and partners in addressing IP problems. I introduced the company to colleagues in the Commercial Service at the Consulate who assisted in conducting research on the scope of the counterfeits problem on Taobao. Over the next few months, the company continued to struggle in its efforts to remove infringing stores from Taobao. I raised this problem with Alibaba, which assigned a contact to work with the company on takedowns. Recently I received an email from the company’s CEO, informing me that the company was successful in opposing the trademark cancellation proceeding and that its connection with Alibaba was helping address its online counterfeiting issues. The company thanked USPTO for its assistance and stated, “I’m continually grateful to you for all you have done to help [us].”
I also conduct numerous IP outreach activities with rights holders and industry associations in China and the U.S. For example, I led a group of shoe and apparel companies to Bengbu, Anhui Province, where we met with law enforcement, IP agencies and the courts to express appreciation for successful anti-counterfeiting actions in Bengbu and to conduct a dialogue on how rights holders can be more effective in enforcing their IP. I also joined PTO Director Andrei Iancu in Seattle and met with local companies, universities, and industry associations to discuss China IP. In a June 8, 2018 blog post, Director Iancu highlighted the outreach and the IP Attachés’ value to U.S. companies.
Aaron: How do you engage with China?
Michael: I conduct training activities and advise the Chinese government on U.S. IP law and policy. This includes frequently organizing and presenting in English and Chinese at IP forums, roadshows, workshops and webinars that address China IP. I recently saw a list of over 50 public addresses on China IP that I’ve made as U.S. IP Attaché.
As for the types of topics covered, this year I’ve held capacity building events for Chinese officials on bad faith trademarks, technology licensing, building global brands, trade secret enforcement, trademark examination, and civil and criminal IP enforcement.
It’s also important in my job to cultivate relationships with Chinese officials and judges. I do this through frequent outreach and collaboration, usually in Mandarin Chinese, with China’s National Intellectual Property Administration (formerly, State Intellectual Property Office), State Administration for Market Regulation (formerly, State Administration for Industry and Commerce), Customs, Public Security Bureau, State Council Leading Group, Ministry of Commerce, China Trademark Office, National Copyright Administration, and IP specialized courts and tribunals.
Another area of responsibility is helping to secure high IP standards in trade agreements and laws and monitoring implementation of these provisions. For example, I helped formulate and negotiate the U.S. proposed IP outcomes for the US-China Joint Commission on Commerce and Trade (JCCT) from 2014-2106, served as China lead for the PTO in JCCT talks in 2016, co-led negotiations on China IP outcomes at the 2016 Strategic and Economic Dialogue (S&ED) and the G-20 bilateral talks in Beijing in 2016, and co-led negotiations on Taiwan IP outcomes at the 2017-18 Trade and Investment Framework Agreement (TIFA) bilateral talks in Taipei.
I also provide input on each of China’s proposed draft IP-related rules, guidelines and legislation since 2014. For example, in July of this year, I prepared and helped to coordinate U.S. interagency’s submission of comments on China’s draft E-Commerce Law and proposals for amending China’s Trademark Law. And I prepare core IP input for Mission China’s submissions to U.S. reports on China IP and trade, including USTR’s annual Special 301 Reports and Notorious Markets Lists and 2018 Section 301 findings of China’s acts, policies, and practices related to technology transfer, IP and innovation.
Aaron: What is your background?
Michael: I have over 20 years of experience as an IP attorney in the US and Greater China, including Hong Kong, Taiwan. I was a partner at Stoel Rives LLP for about 16 years and speak Chinese fluently. I was also a professor at the Brigham Young University teaching IP law.
Aaron: What is the training required to become an IP attaché?
Michael: Each of the current attaches have many years of experience as an IP lawyer. Most come from the public sector, but a few, including me, come from the private sector. Foreign language fluency is not a prerequisite, but I’ve found in China, it can be a valuable tool.
All incoming IP attachés begin their assignment with orientation and training.
Orientation at the International Trade Administration (ITA) will introduce new employees to the structure and function of the ITA, the employee’s role in the development and implementation of U.S. foreign policy, terms of employment, and core skills needed by all Foreign Service employees. Orientation at the USPTO will introduce the attaché to colleagues from other U.S. government agencies who work on IP-related matters; engage representatives from trade associations with knowledge of the host country’s intellectual property rights environment; and acquaint the attaché with the functioning of the USPTO.
Training consists of several course hours and a detail to USPTO’s Office of Policy and International Affairs (OPIA). The IP attaché will attend programs at OPIA’s Global Intellectual Property Academy to enhance his or her knowledge of intellectual property. The length and nature of training depends on the depth and breadth of knowledge of the attaché’s prior knowledge.
Attachés must also complete several mandatory classes prior to deployment overseas. These classes are a combination of classroom and online training offered by the Foreign Service Institute (FSI) Transition Center in Arlington, Va. The FSI offers Foreign Service life skills courses (e.g., diversity, security, protocol, logistics, realities) to U.S. government employees and their spouses preparing for, or returning from, an overseas assignment.
Aaron: Thanks Michael.
Michael: You’re welcome. And thank you for interviewing me. I hope others can see the value of the IP Attaché program. In particular, the great resource that the IP Attachés can be to companies doing business overseas.