In today’s global economy, it is imperative for businesses of all sizes to have an international intellectual property (IP) strategy. Failing to safeguard your valuable patents, trademarks and copyrights when contracting with partners overseas, particularly in China, can lead to costly lawsuits and other legal headaches. International IP protection is important because legal protections obtained in the United States, such as patents and trademarks, generally have no effect in a foreign country. Therefore, businesses must take additional steps to safeguard their IP rights in other jurisdictions. Below is a brief summary of the legal issues encountered when seeking to protect IP overseas.

Patents are territorial and must be filed in each country where protection is sought. Accordingly, businesses that want patent protection in other parts of the world must apply for a patent in each of the other countries or in regional patent offices. While international patent registration was once extremely cumbersome, it is getting easier, particularly in key European and Asian markets. For example, the Patent Cooperation Treaty (PCT) streamlines the process of filing patents in multiple countries. By filing one patent application with the U.S. Patent and Trademark Office (USPTO), U.S. applicants can concurrently seek protection in up to 143 countries. Elsewhere, inventors file a patent application in accordance with the requirements of the particular jurisdiction.

International Protection for Trademarks

Trademark protection also ends at the United States’ border, unless businesses take additional measures. Thankfully, the USPTO is working with its partners overseas to make international registration less burdensome and costly. The Madrid Protocol also makes it easier to file for trademark registration in multiple countries. By filing one trademark registration application with USPTO, U.S. applicants can concurrently seek protection in up to 84 countries. Defensive registration is particularly important with respect to trademarks, so businesses should investigate the requirements in key markets as early in the process as possible. For instance, many U.S. businesses wishing to enter the Chinese market find that unrelated Chinese entities have already secured their trademark.

International Protection for Copyrights

Like the United States, most foreign jurisdictions do not require copyright registration. It can, however, offer significant benefits, including proof of ownership. The United States has bilateral agreements with many countries throughout the world under which we honor each other's citizens' copyrights. Copyrights are also addressed in free-trade agreements, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). For reference, the USPTO provides a listing of countries and the nature of their copyright relations with the United States in the International Copyright Relations of the United States. In cases where copyright relations do not exist, businesses must follow local laws regarding copyright registration. It is also important to recognize some countries do not afford any protection to foreign works.

The Message for New York and New Jersey Businesses

Since securing and registering patents, trademarks, and copyrights outside of the United States is often complex, it is generally advisable to work with experienced counsel who can devise a comprehensive international IP strategy. Other important considerations include licensing provisions in business contracts and trade secret protection through the use of non-disclosure agreements and other legal tools. If you have questions about this post or would like to discuss your company’s IP strategy, please contact me or the Scarinci Hollenbeck Intellectual Property and Technology attorney with whom you work.