Companies and individuals that conduct business in the United States should always be thinking about the global marketplace, given the rich opportunities it affords for expansion. Whether long-established or just starting out, corporate or self-run, intellectual property rights are among a business’ greatest assets and therefore an essential part of any formula for worldwide growth.
Even before you have established a factory or have drawn up a contract to sell your goods abroad, you should consider registering your foreign intellectual property rights. With respect to trademarks, since applications are filed on an intent-to-use basis, and since many nations never require use at all, filing should be done before others can appropriate and profit from your product or brand abroad. When dealing with patents, it is important to note that, in many countries, patent rights are lost if an invention is publicized in any way before the application is filed. For this reason, being careful about disclosure and acting quickly are essential precautions to take if patent rights are to be secured. These actions are all the more important given that worldwide manufacturing and mass distribution, along with the effect of the Internet, make today’s intellectual property more vulnerable to theft than ever before. Safeguarding this commodity by protecting your foreign rights is the best way to reduce this risk. Acting swiftly and proactively serves to block possible predators, and maximizes the potential of your intellectual property as well.
Recent legislation in the form of varied international treaties makes the task of filing for foreign protection easier and significantly less time-consuming than in the past. With regard to trademark rights, which are typically not recognized abroad unless the mark is officially registered, there are two central bases to cover. For protection in the European Union, the Community Trademark Office offers a single-filing system that extends from application to approval, with one “stamp” good for all member nations. Slightly different is the Madrid Protocol, where a single form can initiate proceedings in the more than 60 member countries. However, examinations and issuances of registrations are ultimately determined by each individual government, one at a time.
To obtain foreign patent protection, applicants may file a patent application under the Patent Cooperation Treaty (PCT) which provides an efficient and cost-effective method for obtaining patent rights in foreign jurisdictions. Generally, the PCT enables an applicant to file one international application in the United States Patent and Trademark Office, and have that application acknowledged as a regular national filing in all member countries of the PCT which are designated by the applicant. Currently, there are about 125 countries which are members of the PCT.
In the context of foreign copyright protection, United States membership in the Universal Copyright Convention and the Berne Convention allows for a large number of reciprocal rights between the United States and foreign countries. Still, registration usually is not available, nor is it typically needed, outside the U.S.
Securing international rights is a necessary first step when contemplating a move into new global markets, but there are other matters which should be considered as well. Gottlieb, Rackman & Reisman prides itself on addressing clients’ needs and resolving legal issues with business acumen and unparalleled expertise. Our skilled attorneys can help you navigate a range of issues including:
• Clearance and protection
• Valuation of intellectual property
• Internet Technology & E-commerce regulations
• Foreign Litigation
• Parallel imports
• Fighting counterfeiters and pirates
• Due diligence in mergers & acquisitions, licensing, and collateralization
We can answer your questions with the confidence and experience needed for pursuing your goals on a global scale. Let us ease your transition to the global marketplace—we welcome your inquiry anytime.