Protecting IPR Abroad: Resources For U.S. Exporters
Globalization and the rapid proliferation of technology have elevated the importance of intellectual property protection for small and medium sized enterprises (SMEs). 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. This article is intended to provide exporters with a brief overview of intellectual property rights and the methods being employed to protect those rights internationally.
The World Intellectual Property Organization (WIPO) defines intellectual property (IP) as “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” More specifically, intellectual property refers to a broad collection of rights relating to such matters as works of authorship, which are protected under copyright law; inventions, which are protected under patent law; marks, which are protected by trademark law; as well as trade secrets, designs and other related rights. It is important to note that these forms of intellectual property are very different and the protection afforded under them serve different purposes. To learn more about IPRs, visit the WIPO website.
Intellectual property rights (IPRs) give the owners of ideas, inventions, and creative expression the right to exclude others from access to or use of their property for a certain period of time. International treaties and the laws of the various countries differ significantly in terms of the degree of protection and enforcement available.
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.
Some advantages and minimum standards for the protection and enforcement of intellectual property do exist under treaties or other international agreements. For example, copyright protection is automatic in all Berne and WTO countries without any formality (such as registration, copyright notice, etc.), and is extended on the basis of national treatment–that is, a U.S. author suing in France under French copyright law is entitled to the same protection as a French author suing in France under French copyright law. The World Trade Organization (WTO) agreement on trade-related aspects of intellectual property rights (TRIPs) upgraded standards of protection for a full range of IPR. The agreement also provides for the effective enforcement of those standards both internally and at the border. The TRIPs Agreement is the first multilateral intellectual property agreement that is enforceable between governments. The agreement has a strong dispute settlement mechanism to resolve disputes.
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.
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 on the benefits of filing for an international patent under the PCT see the January 2002 Export America article titled “The Advantages of Using the Patent Cooperation Treaty”.
For more information on filing for a patent in the United States visit the USPTO website or call the Patent Assistance Center at 1-800-786-9199 or (703) 308-4357. You can also file for a U.S. patent electronically using the USPTO’s Electronic Filing System. For filing an international patent under the PCT, visit the USPTO website. Additional information on the PCT is also available on the WIPO website.
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. For more on how to file for a trademark internationally see the March 2001 Export America article titled “Small Business Primer to Filing for Trademarks in a Foreign Country".
To learn more about trademarks, visit the USPTO website or call the Trademark Assistance Center at 1-800-786-9199 or (703) 308-9000. You can also file a trademark application electronically using the USPTO Trademark Electronic Application System (TEAS).
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.
To learn more about copyrights, visit the U.S. Copyright Office website or call (202) 707-5959 to speak with a copyright information specialist. Certain users can also register a copyright electronically using the U.S. Copyright Office CORDS Electronic Registration System.
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. For more information on enforcement and dispute resolution visit the WIPO SME website and click on IP for Business.