As a smart business owner, you’ve sought patent protection for all your products and processes, along with your trademarks and other intellectual property. However, you may not be aware that the rights granted by a U.S. patent extend only throughout the United States—they have absolutely no effect in a foreign country.
Any inventor who wants patent protection in other countries is required to apply for a patent in each of the other countries or in regional patent offices.
Nearly every country has its own patent laws and requirements, and a business owner who wants patent protection in a particular country must make an application for patent in that country.
Likewise, those countries have their own laws for trademarks, copyrights, and other forms of intellectual property.
While this sounds like a daunting task, there are some shortcuts to international IP protection.
The Patent Cooperation Treaty (PCT) can streamline the process of filing patents in multiple countries. Filing one “international” patent application with the U.S. Patent and Trademark Office (USPTO) lets a U.S. applicant concurrently seek protection in up to 143 countries. Likewise, the Madrid Protocol simplifies the application process for trademark registration in multiple countries. An inventor or business owner can file one trademark registration application with USPTO and concurrently seek protection in up to 88 countries.
Because of international copyright treaties and conventions, many countries don’t require registration of a U.S. copyright for copyright protection. Nonetheless, registration can have its benefits, like proof of ownership. The United States has copyright relations with many countries, and we enjoy reciprocal recognition of each other’s citizens’ copyrights.
Should I Seek International IP Protection?
Prior to speaking with an experienced intellectual property legal professional, think about these questions:
- Will my company be conducting business outside the U.S.?
- Will my company ever export our products overseas?
- Will my company ever manufacture our products overseas?
- Where will our products most likely be commercially sold?
- What forms of IP are available to me in those countries?
- What are the odds of my company’s products being copied abroad?
If you’re unable to answer any of these questions, bring them up with your IP attorney to discuss.
How Do I Protect My Company’s Intellectual Property Overseas?
Many business owners may have trouble protecting their intellectual property rights in other countries, primarily because they don’t know how to obtain and enforce rights in specific foreign markets. While it’s not as simple as A-B-C, an experienced IP attorney can advise you on securing these protections. Here are some of the basic steps that companies should consider:
- Partner with experienced local legal counsel to develop an overall IP rights protection strategy;
- Develop detailed intellectual property rights language for licensing and subcontracting agreements;
- Conduct due diligence of potential foreign partners;
- Record your company partners’ U.S.-registered trademarks and copyrights with Customs and Border Protection; and
- Secure and register patents, trademarks, and copyrights in key foreign markets, including defensively in countries where IPR violations are most likely to occur.
Contact an Experienced IP Counsel
If you plan on selling, distributing, manufacturing, or sourcing your company’s products abroad, you should register your IP with each country’s intellectual property authority. This will ensure that your business’ intellectual property rights are protected internationally. Discuss your IP issues with an experienced intellectual property legal professional.
Attorney Michael Ahmadshahi focuses on patents, intellectual property, copyright, and trade secrets in Irvine, California. The Ahmadshahi Law Offices are also located in Beverly Hills and Sherman Oaks. Call us toll free at (800) 747-6081 or direct at (949) 260-4997 or email [email protected] and let us help you with your international IP questions and the strategy for your company.