As we prepare to celebrate Independence Day here in the United States next month, I wanted to chat about international protection of your US company’s IP.
For the most part, all intellectual property rights stop at the border of whatever country granted those rights. That means your US patent won’t protect you in foreign countries. Of course, you can still use your US patent to stop people from importing your invention to the US and selling it here. But (in general) you can’t stop them from making it overseas in the first place.
It also means your US trademark rights and copyright rights don’t extend outside of this country.
So, what’s a good American company to do? Here are three big steps you can take to make sure you’re covered.
Step 1. Consider Your International Patent Protection Options
Your US patent application can be used as the basis for filing patent applications outside the US. Be aware, however, that there are strict deadlines involved. In general, you must file internationally no more than 12 months from the date of your first US patent application. That can be done by filing separately in each of the countries you’re interested in, or (in a multi-step process) by filing one “PCT” application and then dealing with the individual countries at a later time.
Also, be aware that most foreign jurisdictions do NOT have the novelty grace period we enjoy here in the US. This grace period means you can go public with your invention up to a year before you file your US patent application. In other countries, that simply isn’t an option – you’ll need to file a patent application before you make your invention public (at a trade show, through sales, etc.). Luckily, filing in the US satisfies this requirement. So, as long as you file your US patent application before you go public, you’ll be okay. If you do it in the opposite order, you’ll still be okay in the US, and possibly in a few other places (like Australia).
- Talk to your patent attorney BEFORE going public with your invention.
- If you’ve already disclosed your invention to others, make sure you talk to your patent attorney as soon as possible.
- Know that your US patent will not protect you in foreign countries.
- Discuss which markets you want to enter, and whether patent protection there will be important.
Step 2. Consider Your International Trademark Protection Options
Trademark rights are established by using your mark in commerce. They’re also, for the most part, based on seniority; sort of a first-come-first-served system. For that reason, it’s important to get your rights established ahead of others who might want to use the same trademark. Filing for federal registration in the US is an important step. Like patents, an application for federal registration in the US can be used as the basis for foreign trademark filings. This time, however, there’s a six month deadline rather than twelve.
So, no later than six months from your US trademark filing, you’ll want to consider whether to file in foreign countries. This can be done on an individual, country-by-country basis, or in multiple countries at once using the Madrid Protocol. If you do this within that six month window, you’ll get to keep your earlier filing date. It’s sort of like your US application has been holding your place in line.
Important note here: you don’t necessarily lose trademark rights by missing this deadline. You simply lose your place in line. You can still file later if now’s not the right time.
- Talk to your trademark attorney about which countries you will do business in, whether it’s sourcing your product or selling it there.
- Know that your US trademark application can be used to hold your place in line outside the US for up to six months.
- Consider the Madrid Protocol if filing in several foreign countries at once, but have your attorney do a cost comparison based on the actual countries you’ve selected.
Step 3. Consider Your International Copyright Protection
Just like there’s no such thing as a single international patent or a single international trademark, there’s also no such thing as an international copyright. That being said, this area of IP has been the subject of major international treaties. Those treaties have generally resulted in the recognition of copyright rights established in other countries. You can think of it sort of like a driver’s license, where your Idaho license is good for driving in Florida (for example). However, it’s actually not quite that simple, and having rights isn’t the same thing as being able to enforce those rights. Talk to your IP attorney if you have questions, especially if you’re dealing with heavy-duty copyright matters like international music rights or high-end software licensing.
- Talk to your IP attorney about whether you need to take any steps to secure your copyright rights in foreign jurisdictions.
- Depending on the country, you may already be covered by reciprocal copyright agreements based on your US rights.
- It’s a good idea, even internationally, to mark your copyrighted materials with © [Year First Published] [Copyright Holder’s Name].
That’s it for now. International IP strategy is a complex subject. However, it’s a topic you need to think about it if you’re developing a regional or global brand, or selling your invention in more than one country. As always, talk to your IP attorney or contact us if you’ve got any questions.
Photo © 2018 Dave Bourgeau
Blog Post © 2019 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.