INTERNATIONAL INTELLECTUAL PROPERTY / INTERNATIONAL INDUSTRIAL PROPERTY PROTECTION
is a necessity in the increasingly interdependent world in which we live.
Not only are foreign markets certain to be swamped with
copies of products which are not protected in those markets, but even
defending one's industrial property/intellectual property in the home nation
can be difficult without the assistance of foreign jurisdictions.
Luckily, the nations of the world are party to numerous agreements
which seek to ease access to each other's industrial property laws.
Unluckily, the area of international industrial property quickly becomes
a confusing minefield of overlapping treaties and protocols. Worse, the phrases
"inexpensive international patents" and "inexpensive international
trademarks" are close to being oxymorons. However,
it is possible to learn a few items of "international patent attorney jargon"
that somewhat ease the confusion.
INDUSTRIAL PROPERTY
Industrial property, unsurprisingly, may be treated as a synonym for intellectual
property. In fact, the scope of coverage is approximately the same. It's
worth noting, of course, that other nations have some very significant
legal differences from the US. Some nations don't protect certain things,
other nations hand out patents to anyone who bothers to fill our the paperwork,
others actually provide better examination services than the US, and many
other differences exist. Still, in general, the phrase "industrial property"
may be taken to mean "intellectual property".
DIRECT FOREIGN FILING
The most basic strategy is simply direct foreign filing of patent and
trademark applications in each foreign jurisdiction of interest. However,
the disadvantages of this are apparent. A nation of interest to the applicant
may refuse to accept foreign applicants. Protections and procedures
vary from state to state. The cost of such a campaign, multiplied by the
large number of nations for which protection is available and desirable
(several dozen states out of roughly 200 recognized nations) would normally
be prohibitive: this is not a way to achieve inexpensive international patent protection.
Nonetheless, direct foreign filing needs to be remembered because
in many cases, it remains the only route available for IP protection.
PATENT COOPERATION TREATY
The premier industrial property/intellectual property accord is the Patent
Cooperation Treaty, which makes it possible for a patent application filed
in one nation to eventually circulate throughout the entire system. A two step
process, applicant's first file an "international phase" application in any one
of a number of patent offices. The US PTO is one such office. After an examination
similar to an ordinary application, the application "enters the national phase" in
the selected foreign jurisdictions. While this two step application process sounds
almost as complex, or more complex, than numerous direct foreign filings, in fact
the initial phase examination carries great probative weight in the later
national phase filings. Even better, the application's viability can be maintained
for an extended period of time (20 or 30 months) while the applicant finds out
how the invention fares in the initial examination and in the marketplace. This
in effect allows the applicant to preserve the right to numerous foreign filings without
paying the cost until the profitability of the invention is known. Obviously,
this is a big advantage to the cost conscious applicant.
THE PARIS CONVENTION
The Paris Convention, properly known as the International Convention for the '
Protection of Industrial Property, requires each convention nation to provide
citizens of other convention countries with the right to register a trademark
on the same footing as a local. Thus, if a US citizen registers a mark in France,
France is required to treat the US trademark owner like a French national trademark
owner. There are some other protections of limited value.
MULTINATIONAL PATENT AND TRADEMARK OFFICES
One recent trend has been the establishment of an alphabet soup of multinational
patent and trademark offices. These institutions generally offer some variation
on a good scheme in which one patent or trademark applies throughout all
of the member states. These can be enormous boons to applicants. For example, the
European Community Trademark is a real convenience for those seeking protection
in Europe. There are numerous organizations of this type, enough so that even the
acronyms are beginning to overlap: EPO could stand for the European Patent Office
or Eurasian Patent Office. The European EPO, by the way, is a great help to
those seeking international protection. Until the last few years, filing in the EPO,
the US PTO, and the Japanese Patent Office, was enough to provide adequate
international protection. Since those days, a number
of up-and-comers like the Republic of Korea, Mexico, the People's Republic of China and the
Republic of China became capable of advanced industrial production and things
have gotten more complex again. Still, whenever multinational patent offices are available,
they should be used.
THE MADRID AGREEMENT
The Madrid Agreement allows citizens of a member state to file for a trademark
registration in any other member state after filing in their own state. Unfortunately,
the Agreement has some flaws, and the US and numerous major non-European nations
are not members of the agreement.
INCOMING VERSUS OUTGOING
If you seek protection of your intellectual property/industrial property in
a nation other than your own, your applications will be "outgoing" from
your own nation and "incoming" to the foreign nation. In general, it
becomes necessary to procure legal assistance in both nations.
Experienced attorneys know that there are ways in which costs can be
prevented from spiraling out of control. Careful use of the treaties
previously listed is only the start. Different international patent firms
provide different qualities and costs of service, selection of one of
the better firms is only the start of the process of obtaining inexpensive
international intellectual property protection. Our law office is happy to
handle clients going in both into the US from other nations, and from the
US to other nations.
1. Types of Intellectual Property
2. About Patents
.....a) Computer Patents
.....b) Software Patents
.....c) Telecommunications Patents
.....d) Electronics Patents
.....e) Business Method Patents
.....f) E-commerce Patents
.....g) Mechanical Patents
.....h) Chemistry Patents
.....i) Biotechnology
Patents
.....j) Pharmaceutical
Patents
3. About Trademarks
4. About Copyrights
5. Other Types of Protection
6. International Protection
7. Costs
8. For a Free Initial Consultation
9. Further Questions
10. About Mr.
Barber