EXPORT NEWSLETTER: INTELLECTUAL PROPERTY

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 The intangible nature of intellectual property and the worldwide inconsistency of standard practices, create challenges for U.S. businesses wishing to protect their inventions, brands, and business methods in foreign markets. The three most common vehicles for protecting intellectual property are patents, trademarks, and copyrights.

Exporters must have a brief overview of intellectual property rights and the methods being employed to protect those rights internationally.

 

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Intellectual Property Protection and Trademarks abroad.

The United States provides a wide range of protection for intellectual property through the federal registration of trademarks and service marks; through federal patent protection and copyright protection; and, under state laws, through protection of trade secrets and marks. Federal protections extend only throughout the United States, its territories and possessions.

U.S. IPR laws confer little or no protection in other countries. To secure full patent rights in another country, you must apply for a patent in that country. To learn about the specific intellectual property laws and requirements of individual countries, visit the WIPO guide to Intellectual Property Worldwide.The question of whether to pursue international protection for your IP is not always clear cut: for example, there may be cases when it is advisable to forego patent protection to safeguard trade secrets and sensitive information that may need to be published in the patent process. In any case, the first step in determining if IP protection is right for your company is to secure the services of specialized legal counsel. It is important to note that in addition to obtaining patent protection, you should also protect your trade secrets through appropriate confidentiality provisions in employment, licensing, marketing, financing, distribution, and joint venture agreements.

How Do I Obtain Patent, Trademark, Or Copyright Protection In Another Country?

Patents: A patent is a legal instrument that gives its owner certain exclusive rights for an invention. Most patents are directed to a product or process that provides a new or improved way of doing something, or offers a new technical solution to a problem. In the United States, the life span of a patent depends on many factors, but once secured, a patent generally provides protection to its owner for a period of 20 years from the date the patent application was filed. Since a patent granted by the U.S. Patent and Trademark Office (USPTO) only protects the owner of the patent in the United States, it may be necessary to obtain patent protection from foreign patent offices for any commercial activity to be conducted outside the United States.

The Patent Cooperation Treaty (PCT) streamlines the process for U.S. inventors and businesses wishing to obtain patent protection in other countries. By filing one international patent application with the USPTO, U.S. applicants can concurrently seek protection in up to 115 countries. For an invention made in the United States, U.S. law prohibits filing abroad without a foreign filing license from the USPTO, unless six months have elapsed since filing a U.S. application. 

For more information on filing for a patent in the United States visit the USPTO website .You can also file for a U.S. patent electronically using the USPTO’s Electronic Filing System.

 

Trademarks: A trademark is a word, name, symbol, or device that identifies and distinguishes the source of goods used in trade. In short, a trademark is a brand name. Service marks perform the same function for businesses dealing in services rather than goods.
In the United States, rights to trademarks, service marks, and other marks are acquired through use, registration, or prior foreign registration. However, in most countries, trademark rights are acquired only through registration, and many countries require local use of the registered mark to maintain the registration. 

 

Whether a given mark can be registered in a particular country will depend on the law of that country. For example, some countries do not protect service marks. The United States is not a member of any agreement under which a single filing will provide international protection.

Copyrights: A copyright protects original works of authorship. In the United States, this protection gives the owner the exclusive right to reproduce, prepare derivative works, distribute copies, or perform or display the work publicly.                   No “international copyright” provides universal protection for your work throughout the world. However, securing copyright protection has been greatly simplified under international copyright treaties and conventions, such as the Berne Convention and the WTO TRIPS Agreement. In most countries, including the United States, registration is typically not required. A small number of countries, however, offer little or no protection for the works of foreign nationals. Ultimately, copyright protection depends on national law. Before publishing a work anywhere, it is advisable to investigate the scope of protection available, as well as the specific legal requirements for copyright protection in countries in which protection is desired.
 

How Are Intellectual Property Rights Enforced Abroad?

The ease of IPR enforcement depends on local law, the resources of the intellectual property owner, the attitude of local officials, and many other factors. In the United States and many countries, intellectual property owners pursue infringement claims through civil litigation. Internationally, avenues to address IP infringement vary by country, and will be dictated by local law. As required by the TRIPs Agreement, criminal procedures and penalties in cases of willful trademark counterfeiting and copyright piracy must also be available in WTO member countries. It is important to seek proper legal advice on any issues related to IPR enforcement. 

How should I protect my intellectual property?

Different types of intellectual property are protected by different means.

*   In the U.S., patents may be available to any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Patent protection must be sought by application with the U.S. Patent and Trademark Office (USPTO).

*   Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Registration with the USPTO is not required, but does provide certain advantages.

*   Copyrights protect original works of authorship, including literary, dramatic, musical, artistic and certain other works, both published and unpublished. In the United States, the U.S. Copyright Office handles copyright registration that, although not required for protection, does confer advantages.

 

How do I register my patent?

The U.S. Patent and Trademark Office (USPTO) reviews patent applications and determines whether an application meets the requirements for federal registration. T

Is my U.S. patent good in other countries?

Patents are territorial and must be filed in each country where protection is sought.  By filing one patent application with the U.S. Patent and Trademark Office (USPTO), U.S. applicants can concurrently seek protection in up to 127 countries as of September 26, 2005. 

How do I check to see if a patent is already registered?

Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. The best advice for the novice is to contact the nearest Patent and Trademark Depository Library (PTDL) and seek out search experts to help in setting up a search strategy.

You may also wish to consider contacting an attorney specializing in patent law or a patent search firm. 

 

Does a U.S. trademark registration protect a trademark in a foreign country?

No. Trademarks are territorial and must be filed in each country where protection is sought.

However, if you are a qualified owner of a trademark application pending before the U.S. Patent and Trademark Office (USPTO), or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the International Bureau of the World Property Intellectual Organization (WIPO), through the USPTO. More information on filing an international application under the Madrid Protocol, visit the USPTO website.

To file with a specific country, check WIPO’s list of international trademark offices here: www.wipo.int/directory/en/urls.jsp.

Make sure to consider registering transliterations (representations of words in the corresponding characters of another alphabet) when making trademark decisions. For example, foreign entities may trademark the name of your company written in their alphabet to make a transliteration of you trademark that they then trademark for themselves.

How do I prevent someone else from using a trademark similar to mine in the U.S.?

There are several ways to prevent third parties from using your trademark. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law.

The U.S. Patent and Trademark Office’s (USPTO) examining attorneys do not consider trademark use dates when examining applications; however, the USPTO's Trademark Trial and Appeal Board (TTAB) does consider who is entitled to registration depending on who has superior use in commerce dates. If your dates are prior to the other party’s and you can prove it to the TTAB, you have the opportunity to do so - through opposition proceedings as well as through a petition to cancel the mark once it has registered.

You may also file a trademark infringement action against the other applicant to get an injunction against them to stop their use of the mark. 

A USPTO registration is an evidentiary presumption that the registrant is the owner and has the right to use the mark. However, that presumption can be rebutted in court by one who has prior use of the mark in commerce.