International IP Protection…A Primer for the Global Economy

You don’t need an IP attorney to tell you that regardless of the business you are in, you will likely be doing or have the opportunity to do business internationally.    What you may need an IP attorney to tell you is this: securing your IP rights in the United States is likely not enough to protect you internationally.  So, you should consider where you sell those widgets currently or where you intend to in the future and identify the necessary filings in order secure international rights in those countries.

Far too many times business owners assume that registering a trademark, copyright or patent in the United States provides protection worldwide.  That is simply not true.  These business owners mistakenly believe that if you have an e-commerce website and sell widgets, you can do so anywhere and everywhere.  They fail to consider that they need to take action to secure IP protection outside of the United State and, even worse, that they may be infringing international IP rights of others.

Business owners need to remember that IP rights are territorial, meaning they extend to the geographic locations in which they are used or secured via registration.  It is worth noting that different countries have different IP laws, some of which may, for example, provide trademark rights to the first to use the mark in that country while others provide trademark rights to the first to file and successfully register the mark in that country.  While there are some exceptions to this (e.g. various treaties may provide copyright protection in other countries), it is important to register your trademarks and patents in those countries in which you do or intend to do business.

Recognizing this at the time you file for trademark or patent protection with the United States Patent and Trademark (USPTO) is important.  It can even save you time and money in the long run.  When it comes to patents, you should consider an international application, which is allowed for pursuant to the Patent Cooperation Treaty (PCT), which takes advantage of a unified procedure for filing patent applications in certain countries.  When it comes to trademarks, you should consider international registration of trademarks via, for example, the Madrid Protocol so as to allow for protection in participating countries (the list for International Registration of Marks is continuously expanding).

Far too many times I have seen a successful US company look to expand into its neighboring North American countries, including Mexico and Canada, only to face IP issues.  It is also too common of an occurrence that consumers in a foreign country become one of the primary purchasers of a company’s goods only for a competitor to recreate (or some would say infringe) that company’s IP, secure the trademark and/or patent in that country and ultimately take its customers and try to prevent further sales there.  Remedying such a situation is almost always far more resource intensive than having secured international IP protection at the outset.

In the end, the global economy is the new economy.  Register your trademarks, register your patents and register your IP…and do so internationally.




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