International

A. Patents

Patents are territorial that is, a patent must be applied for and obtained in each country in which protection is desired. There are very few "regional" patents and therefore, the approach to international patenting is on a country-by-country basis. After filing a US patent application, the patent owner has twelve months in which to file an international application to ensure that the international application has the same filing date of the invention owner’s original US patent application.

The United States is a member of the World Intellectual Property Organization (WIPO) that has adopted the Patent Cooperation Treaty (PCT). The PCT process is, in essence, a "delay tactic". The PCT system allows the patent owner to delay the filing of country-by-country patent applications from the typical 12 months to 30 months from the applicant's earliest US filing date. Thus, the term "delay tactic". There are several other benefits that we can explain to you more fully in person. In addition, it is important to remember that most international patents have added costs over and above those of US applications. These added costs include translation costs, payments for requesting examination, and annual maintenance fees (even though the patent may not yet have been issued).

In addition to the PCT process, there are a few "regional" patent processes that reduce the filing requirements at the local level. For example, the European Patent Office (EPO) allows for a majority of the substantive examination of a patent application to take place in a common format at the EPO but still requires the examined EPO application to be submitted directly in each member country for final ratification, after paying fees in each country in which the EPO application is to be ratified.

 

B. Trademarks

Trademarks are also territorial. There are, however, several "regional" trademarks that are available and very useful most notably, a European wide trademark, which is good in all of the European Union (EU) countries. Another useful tool to US individuals and companies is the Madrid Protocol. The Madrid Protocol allows a U.S. trademark owner to file a single on-line application with the U.S. Patent and Trademark Office in English, pay the fees in U.S. dollars, and potentially obtain protection for its mark in any or all of the 78 Madrid Protocol member countries. Our firm routinely does this and the cost savings can be substantial since we do not have to involve foreign lawyers in this process. Without this treaty, the trademark owner seeking equivalent protection would have to file an individual application in each country, in the language of that country and in the currency of that country.

In the United States, Great Britain, and other countries whose laws come from the British "common law", trademark rights stem from the use of a trademark in connection with various products or services. In the rest of the world, trademark rights are based on the first to go to the trademark office and "register" these rights. Accordingly, it is important when doing business internationally to anticipate those foreign countries in which trademark protection is desired, and to file the applications as early as possible. Trademark "pirating" is still prevalent in many parts of the world.

 

C. Copyrights

Copyright rights internationally differ significantly from patent and trademark rights in that without any registration requirement, copyright rights belonging to a US author automatically extend internationally. Although there is no registration requirement in most countries, many countries require a copyright notice, which is not mandatory in the US. Therefore, all published materials should include a copyright notice, as described earlier in this publication, and the term "all rights reserved" to meet some to the international notice requirements.

The firm's attorneys have the expertise to identify the best international strategy in view of U.S. law and a number of international treaties. Once we have have a chance to fully understand all of our client's needs, we can identify an international protection strategy that best suites our client and their goals.