International IP Law: Crash Course Intellectual Property #6
How to Protect Intellectual Property Internationally
Intellectual property will usually take the form of patents, trademarks, and copyrights. These forms of intellectual property, if recognized by law, will provide you with certain rights in inventions, processes, names, marks, and creative works. However, your rights to a particular piece of intellectual property are usually constrained by territorial borders. In other words, just because your trademark is protected in the U.S. does not mean it is protected in China. To get intellectual property protection internationally, you will need to register your property with each country you want protection in. In addition, if you want to enforce the international intellectual property rights you have, you will need to utilize the judicial and/or administrative systems in each individual country.
Registering Your Intellectual Property Abroad
Determine where protection is needed.Patents and trademarks are territorial, which means you will need to get intellectual property rights in each country you plan on doing business in. For example, if you have intellectual property rights in the United States, but you plan on doing business in China, your intellectual property rights in the United States will not extend to China. You will need to seek separate protection with the China. Many countries extend copyright protection automatically. When you are determining where, if anywhere, you will need intellectual property protection, you will need to consider the following:
- Will you be conducting business outside of the United States?
- Are you ever going to export products?
- Will you ever manufacture products abroad?
- Can you afford international intellectual property protection?
- What forms of intellectual property do you have?
- What are the chances that your product will be copied overseas?
Obtain country specific toolkits.If you have determined that you need protection in certain countries, intellectual property rights toolkits are a great place to find information on obtaining that protection. These toolkits, compiled by the U.S. Department of Commerce with the help of U.S. embassies, provide detailed information about how to protect and enforce your intellectual property abroad. These toolkits can be found online and are available for most major countries. For example, you can find a toolkit for protecting your rights in Brazil, China, the European Union, and Mexico, among others.
- These toolkits are great if you only need protection in one or two countries abroad. They walk you through the process of applying for protection in individual countries. However, if you are looking at protecting your intellectual property in many countries abroad, you may want to submit regional applications or file applications under international law.
Follow each country's process.Once you have determined which country you need protection in and you have found the applicable toolkit, you should take the time to read through it and understand the registration process. Each toolkit will have detailed instructions for registering all types of intellectual property. For example, in China, you will need to do the following before filling out and filing a patent application:
- First, you should hire qualified counsel to help you navigate the complex international intellectual property scene. A lawyer will assist you in determining what applications need to be filed, when they need to be filed, and where they need to be filed.
- Second, if you do not have an office in China, you will need to get an officially designated agent to funnel your patent application through. Once you have a designated agent, you will be ready to fill out an application.
Fill out an application.International intellectual property applications can be incredibly complex and difficult to fill out. Apart from having to follow each country's directions, which will usually not be the same as the process in the United States, your application will have to be submitted in each country's native language. For example, if you need to file a patent application in China, the application must be completed in Chinese and include drawings, details of any priority claim, and a specification. The specification must include:
- The title
- A designation of the relevant technical field
- Any prior art
- The invention's purpose
- The enabling requirement
- The best mode
- Any other administrative information you may have
File the country's application.Once you have completed the application, your designated agent will need to file it with the appropriate state agency. In China, for example, you would file your patent application with the State Intellectual Property Office in Beijing. Once your application is submitted, it will be reviewed to ensure your application meets all of the statutory requirements. If it does, a patent will be issued except for inventions.
- If you have an invention, you will need to publish your application and request a substantive examination of the invention. If China, after the examination, concludes your patent conforms with Chinese law, they will issue you a patent for your invention.
Submit regional applications.If you need protection in more than one or two countries, it might be advantageous to file a regional application. Some countries have agreed to establish these regional applications in order to offer intellectual property protection in an entire region. For example, instead of applying for patent protection in each European country, you could apply for protection with the European Patent Office.To start the process, contact the regional office where you plan to file your application. Each office will usually have a guide for applicants. For example, the European Patent Office offers a guide that walks applicants through the steps of patent registration. If you are filing for European patent protection, you will need to do the following:
- Submit a request, a description, one or more claims, any relevant drawings, and an abstract. All of these forms can be found on the European Patent Office's website.
- The application must be filed in English, French, or German.
- If you do not have a place of business in a state contracting with the European Patent Office, you will need to hire a qualified representative to assist you in the process. A list of qualified representatives can be found on the European Patent Office's website.
- File your application, which is most often done online. However, you can also file in-person with the European Patent Office in Berlin, Munich, or at the Hague.
- Await a decision from the European Patent Office. They will assess your application to ensure it complies with the all of the requirements. If it does, a European patent will be issued.
File a patent application under the Patent Cooperation Treaty (PCT).If you are seeking patent protection internationally in many countries around the world, you will most likely have to file an application under the PCT. By filing one PCT application, you can simultaneously seek protection in 148 countries.The PCT procedure consists of an "international" and "national" phase.
- During the international phase, you will file an international application and have it processed by the Receiving Office. Next, you will need to establish an international search report stating that your patent is unique and has not been patented before. You will then publish your entire international application. The international phase is completed when the International Bureau communicates the existence of your application to various national or regional offices.
- During the national phase, you will need to communicate directly with each national or regional office in order to receive protection. You will have to pay each national or regional patent office's application fee. In addition, you will have to translate your application into each country's language. In some countries, you may also have to appoint a designated patent agent. It is up to you to contact each national or regional office to submit your international application. If you fail to apply within a certain time period, your international application may expire. Each country or region will individually assess your application and grant or deny your patent.
File a trademark application under the Madrid Protocol.If you are seeking trademark protection internationally, you might want to consider filing an application under the Madrid Protocol, which provides a cost-effective and efficient manner of protecting your trademark. Under the Madrid Protocol, you will only need to file one application with one office, in one language, with only one set of fees, and with only one form of currency.Before you can file an international trademark application, you will need to first obtain trademark protection in your "home" country. If you are from the U.S., you can use this guide to Get a Trademark.
- Once you have received basic mark protection with your home country, you will file an international application with the same office where you applied for the basic mark. For example, if you applied for trademark protection in the U.S., you will file your international application with the U.S.. This office will certify your application and send it to the World Intellectual Property Organization (WIPO).
- The WIPO will review your international application, register your mark, publish your registration, issue a certificate of registration, and will notify national or regional trademark offices.
- Each nation or region where your application was forwarded will make an individual determination regarding your mark. This process usually takes 12 - 18 months depending on each country's laws. These decisions will be relayed back to WIPO and you will be notified of each decision.
Enforcing Your Rights Abroad
Determine if you have rights in the particular country.If your intellectual property rights have been infringed, you will most likely have to enforce your rights in a foreign court or administrative agency in order to get an adequate remedy. Because intellectual property rights are territorial, you will only be able to enforce your property rights in countries where your property has been validly registered.If you or your company has been granted valid intellectual property rights in a particular country, you should have paperwork proving this. The paperwork will usually consist of an official certificate sent to you from the country where registration was completed.
Contact the US Department of Commerce Office of Intellectual Property Rights (OIPR).OIPR has country experts and other intellectual property rights experts ready to help U.S. firms enforce rights overseas. They can often suggest strategies for enforcing your rights and can get you in contact with help locally. OIPR will often have lists of local investigative firms, lawyers, and embassy personnel that can help you enforce your rights.
- OIPR, however, cannot provide legal advice and they cannot represent you when a matter is before a court or administrative agency.
Take legal action in accordance with local law.Once you have a solid enforcement strategy in place, you will need to act locally, within the country where your intellectual property rights are being infringed, in order to receive an adequate remedy. For example, in China, if you believe your patent has been infringed, you can take two main avenues to seek redress. Remember, you cannot gauge possible infringement by using U.S. law. You will only be able to make a case if your protected patent has been infringed upon according to Chinese law. Under Chinese law, patent infringement occurs when a protected patent is exploited without your authorization.
- Chinese patent law states that you should first try to negotiate and settle your dispute with the infringer. If this does not work, you can move forward with other remedies.
- Under Chinese law, you can bring an administrative action with the State Intellectual Property Office (SIPO). To start this process, you will need to file a complaint with the local SIPO where the infringement occurred. SIPO will investigate the complaint and you will be able to take part in that investigation. If you win your administrative case, you may be able to get an injunction, cease and desist orders, and money from fines. However, the administrative process has its disadvantages. For example, some companies think the process is subject to local corruption and fines that are too small to deter infringing activities.
- You might choose to file a civil lawsuit in China if you do not want to take part in an administrative hearing. You must file your lawsuit within two years from the date you become aware of the possible infringement. The lawsuit will commence as soon as you file a complaint, which will consist of your name, your lawyer's name, the nature of your claim, the evidence you have, and the names of witnesses. Civil litigation in China is often seen as a last resort because there is a low level of confidence in the integrity and knowledge of the judiciary.
Ask OIPR for assistance if you did not receive an adequate remedy.If, after you seek a legal remedy in the local courts or administrative agencies, you still did not receive an adequate remedy, OIPR might be able to help you raise concerns with foreign government officials. These concerns will usually relate to the administration of justice in accordance with international law and custom. OIPR will review your case and determine whether there was a fair and timely resolution, and whether the foreign government followed the law.
- If the foreign government followed the law, you may not be able to get a remedy in that country. However, if OIPR find that the law was not followed, you may be able to appeal your case or put pressure on the government to rethink their approach.
Preventing Intellectual Property Theft Abroad
Hire qualified legal help.Without international protection (i.e., through registration) and knowledge of enforcement rights, your intellectual property is at risk of being stolen overseas. You can help prevent this from happening by hiring a qualified intellectual property lawyer.A lawyer will help you register your intellectual property internationally and will help you navigate local systems if you ever need to enforce your rights. To hire a qualified lawyer, contact your state bar association's lawyer referral service. After answering a series of questions, the state bar will give you contact information for a series of qualified lawyers in your area.
- Before you hire a lawyer, conduct initial consultations to ensure they feel comfortable in the international market. The lawyer you hire will need to navigate international and foreign laws, conduct business in different languages, and have local contacts in each country you are going to register with.
Develop an intellectual property strategy.If your company is conducting business overseas, or is planning to, you should create an in-depth strategy for protecting your intellectual property. You and your company executives should sit down to determine where protection is needed, how protection will be obtained, and how enforcement proceedings will take place. In addition, your business should have detailed intellectual property rights language ready to be incorporated into every license and contract you execute overseas.
- This language should indicate to every business party your intention to enforce the rights you have in intellectual property abroad.
Conduct due diligence.Before you do business with any foreign partner, you need to research that foreign partner's legitimacy and strength. If you fail to conduct the due diligence necessary to ensure you only do business with reputable partners, your intellectual property may be stolen and your business may suffer. If you are in the U.S., the U.S. Commercial Service can help you conduct the necessary due diligence on your behalf.
- For example, they can investigate a company's capabilities, strengths, and legitimacy before you do business with them. They will provide you with a package of information, which they receive from talking with government, business, and personal contacts they have in each country. These reports can be requested for a fee.
Record your trademarks and patents with Customs and Border Protection (CBP).When you register your trademark or patent with CBP, they will have a record of your property rights and can help prevent the importation of infringing goods.For example, if you have a trademark over a certain brand name purse, and you register that trademark with CBP, CBP will have the ability to stop the importation of purses that use your brand name without your consent.
- To record your intellectual property with CBP, you will have to complete an online application and pay a 0 recordation fee. Your application will need to contain your issued U.S. Patent and Trademark Office (USPTO) Registration Number and digital images of the property (e.g., the mark or word).
Video: Intellectual Property -- Protecting your Ideas: Anupama Dias Abeygunawardene at [email protected]
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