Protecting Intellectual Property Rights 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.
What is Intellectual Property?
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.
What are Intellectual Property Rights and How are They Protected Internationally?
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
International 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.
How Do I Obtain a 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 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.
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. For more information on enforcement and dispute resolution visit the WIPO SME website and click on IP for business.