If your company makes or sells products in other countries, it is incumbent upon you to seek intellectual property protection in those countries. Without some form of intellectual property protection, your property may be used without compensation. Furthermore, you may have inferior products produced by these competitors that reduce the value of the products that you sell.
An investigation into the manufacturing capabilities of the business in the country your product is made or sold is one of the first steps that should be made if you are operating globally. This will provide you with the knowledge of where potential competitors may appear.
The cost of securing intellectual property protection varies greatly throughout the world and can be quite costly. However, a balance must be achieved between the cost of securing protection and the possible loss of market opportunities.
It is important that you analyze the cost and benefits of seeking intellectual property protection and adopt the level of protection that fits your individual needs. Failure to analyze the intellectual property landscape in the countries that you are planning on operating may result in your losing the ability to manufacture your product or may increase the number of competitors.
Our international trade agreements and related IP treaties require member countries to provide means for US IP right holders to obtain and enforce IP rights. IP rights are generally territorial, for example, a US Patent provides protection only in US. For protecting the same IP (protected by the US Patent) in Japan, you will have to get a Japanese Patent. For more information about how to apply for patents or trademarks in individual foreign countries, you have to contact the intellectual property office in that country directly. Once a company has registered for appropriate IP protection in a country, it can use that country’s local laws to enforce its rights. Although most countries do not require registration to enjoy copyright protection, registration can bring certain benefits, such as proof of ownership.
The United States is a member of two treaties: for patents, the Patent Cooperation Treaty (PCT), and, for trademarks, the Madrid Protocol. These treaties make it easier for U.S. citizens and firms to file for patent and trademark protection in other countries. The USPTO processes applications for protection pursuant to these treaties. The Patent Cooperation Treaty streamlines the process by which U.S. inventors and businesses can obtain patent protection in other countries. By filing one international patent application with the USPTO, U.S. applicants can concurrently seek protection in more than 140 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.
The Madrid Protocol streamlines the process by which U.S. trademark owners can obtain trademark protection in other countries. By filing one international trademark application with the USPTO, U.S. applicants can concurrently seek protection in any member country. Changes to a registrationfor example transfers, name or address changes, and renewalsalso can be handled through a single procedural step.
A good first step in seeking international patent protection is filing an application through the patent cooperation treaty (PCT). The PCT application allows you to file one application as a placeholder while you investigate the market and manufacturing potential in each of the countries that you are considering. While you still must complete the file in each of the countries you are interested in, with the additional time that the PCT application affords you, you can reduce your cost to only those countries that you really want protection. In addition, for trademarks use of the Madrid Protocol allows you to file one trademark application and receive protection on your mark in any member country.
The development and maintenance of an intellectual property rights portfolio also should include consideration of trademarks and domain names. A domain name is part of a Uniform Resource Locator ("URL"), which is the address of a site or document on the Internet. In general, a domain name is comprised of a second-level domain, a "dot," and a top-level domain ("TLD"). A trademark, on the other hand, is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods (or services) of one party from those of others. A mark comprised of an Internet domain name can be registered as a trademark or service mark only if it functions as an identifier of the source of goods or services.
Many businesses today register their company name and key brands as domain names in at least the .com domain (and sometimes other generic top-level domains such as .biz and .info). Businesses also may consider the registration of their company names and key brands in the top-level domains for countries in which their products are made or sold (e.g., .cn for China, .eu for European Union). Registration may be sought proactively, to indicate a local in-country presence for marketing products, or defensively, to protect against registration of a domain name by another. Third-party domain name registrations in a country top-level domain also may provide indication of trademark rights that could preclude adoption of a desired mark in that country. The decision to seek Internet domains in every country where the products are made or sold may be prohibitively costly or a U.S.-based business may not be able to meet the local registration requirements. Like other decisions regarding a business’ intellectual property rights portfolio, such decisions should be undertaken thoughtfully and prior to commencing manufacturing operations or sales in a country.
http://www.uspto.gov/web/trademarks/madrid/madridindex.htm - Information on filing an international trademark application under the Madrid Protocol.
http://www.buyusa.gov - General discussion and FAQs on IP and export
http://www.wipo.int/directory/en/urls.jsp - A list of contact information for most intellectual property offices worldwide
http://www.uspto.gov/patents/init_events/pct/index.jsp - Information on filing an international patent application under the PCT