New Ideas, Methods and Products Series      
Volume III      

  

Volume II cover image
International Protection: Patents, Trademarks and Copyrights

THE PROCEDURE

Obtaining protection for patents, trademarks and copyrights in the U.S. alone is no longer sufficient in the modern atmosphere of international competition and global markets. International protection often needs to be extensive and can be quite expensive, but there are ways to reduce and postpone the expense in some cases. Protection must be considered in countries where you intend to market the new product or where competitors may be poised to imitate your product.

There are a number of ways to go about securing patent, copyright and trademark protection in other countries. This primer explains the basic approaches available. Other primers in the series discuss: what things are protectable by patent, trademark, copyright and trade secret; how to establish those property rights; licensing of ideas and products; various agreements used to protect the ideas and products such as employment agreements, confidential disclosure agreements, consultant, supplier and customer agreements, and visitor forms; infringement and litigation; the formal procedure for obtaining protection from conception of an idea to interaction with the Patent and Trademark Office and the Copyright Office; the protection and licensing of biotechnology; protection for product appearance beyond patent and copyright; false advertising -- what is and what isn't permissible; comparative advertising -- what can you say about the competition; software protection and licensing; and rights-in-data, patents, and copyrights under SBIR and other government contracts.


PATENTS

A patent in one country does not protect the invention in any other country: a novel product or method must be protected by a separate patent in each country. In addition, each country has different restrictions that must be met or no patent protection can be obtained. The first and most important restriction is the time within which you must file an application to obtain a patent in a country or forever lose your right to do so.

Not all countries are the same with respect to filing deadlines. For example, in the United States an inventor may file an application to obtain a patent on his invention up to one year after the invention has become public through a publication explaining the invention, a public use of the invention, or sale or offer for sale of the invention. This one-year period is known as the period of grace.

There is no period of grace in other countries such as Great Britain, West Germany, Sweden, France, Italy, Switzerland, Belgium, Austria, Netherlands, Australia and Japan. And each country has a slightly different view of what constitutes making an invention public. In Japan, for example, public use of an invention before filing an application bars a patent only if the public use occurred within Japan, but in France any public knowledge of the invention anywhere bars the patent.

Thus, while the U.S. allows a business one full year to test market its new product, most foreign countries require that the patent application be filed before there is any public disclosure, before the owner can even begin to determine whether the new product will be even a modest success. So while you can delay filing for a year in the U.S., you have to file quickly in each other country of concern. And that is not inexpensive, especially when the U.S. dollar is down against the currencies of other major countries.

But there are ways around having to file immediately, such as provided for by treaty known as the Paris Convention. If you file in the U.S. and then file in any country which is a party to the Convention within one year of the date on which you filed in the U.S., you can rely on the U.S. filing date. That is, as long as you claim priority under the Convention, the filing date awarded in that country will be not the actual date of filing in that country but the date, up to one year earlier, that you filed in the U.S.

In this way, by filing one application for the invention in the United States you can preserve your initial U.S. filing date for up to one year. What this means is that you can file an application in the U.S., then immediately make the invention public by advertising, published articles and sales. If within one year the product appears to be a success you can then file in selected foreign countries. Even though the prior public use of the invention would ordinarily bar your filing in those countries, the Paris Convention protects you. Countries which are members of the Paris Convention include:
Albania      Libya
Algeria Liechtenstein
Argentina Lithuania
Armenia Luxembourg
Australia Madagascar
Austria Malawi
Azerbaijan Malaysia
Bahamas Mali
Bangladesh Malta
Barbados Mauritania
Belarus Mauritius
Belgium Mexico
Benin Monaco
Bolivia Mongolia
Bosnia & Herzegovina Morocco
Brazil The Netherlands
Bulgaria New Zealand
Burkina Faso Nicaragua
Burundi Niger
Cameroon Nigeria
Canada Norway
Central African Republic Panama
Chad Paraguay
Chile Peru
China Phillipines
Colombia Poland
Congo Portugal
Costa Rica Republic of Korea
Côte d'Ivoire Republic of Moldova
Croatia Romania
Cuba Russian Federation
Cyprus Rwanda
Czech Republic Saint Kitts and Nevis
Democratic People'sRepublic of Korea Saint Lucia
Denmark Saint Vincent and the Grenadines
Dominican Republic San Marino
Egypt Senegal
El Salvador Singapore
Estonia Slovakia
Finland Slovenia
Grance Sout Africa
Gabon Spain
Gambia Sri Lanka
Georgia Sudan
Germany Suriname
Ghana Swaziland
Greece Sweden
Guinea Switzerland
Guinea-Bissau Syria
Guyana Tajikistan
Haiti The former Yugoslav Republic of Macedonia
Holy See Togo
Honduras Trinidad and Tobago
Hungary Tunisia
Iceland Turkey
Indonesia Turkmenistan
Iran (Islamic Republic of) Uganda
Iraq Ukraine
Ireland United Arab Emirates
Israel United Kingdom
Italy United Republic of Tanzania
Japan United States of America
Jordan Uruguay
Kazakhstan Uzbekistan
Kenya Venezuela
Kyrgyzstan Viet Nam
Latvia Yugoslavia
Lebanon Zaire
Lesotho Zambia
Liberia Zimbabwe


There are other means by which you can further postpone the cost of foreign filings while preserving your right to file. For example, another more recent treaty known as the Patent Cooperation Treaty (PCT) permits a delay of up to thirty (30) months before actually incurring the costs of filing in individual countries. The PCT option is available if you file and request PCT treatment within one year of your U.S. filing date.

Thus by filing a PCT application in specially designated PCT offices within one year of your U.S. filing and by designating certain countries, you can preserve your right to file in those designated countries without further expense until thirty (30) months from the earlier U.S. filing date. That provides an additional eighteen (18) months for test marketing the product. This does introduce the extra cost of the PCT application filing, but if you are considering filing in six or eight or more countries, the one extra PCT filing may well be worth it for two reasons. First, it delays the outflow of cash which you may not now have or may require for other urgent needs. Second, if the product proves insufficiently successful you can decide not to file in any of the countries designated under the PCT and save the cost of all six national application filings.

Countries which are party to the PCT include:
Albania      Lesotho
Algeria Liberia
Antigua and Barbuda Liechtenstein
Armenia Lithuania
Australia Luxembourg
Austria Madagascar
Azerbaijan Malawi
Barbados Mali
Belarus Mauritania
Belgium Mexico
Belize Monaco
Benin Mongolia
Bosnia & Herzegovina Morocco
Brazil Mozamabique
Bulgaria The Netherlands
Burkina Faso New Zealand
Cameroon Nicaragua
Canada Niger
Central African Republic Norway
Chad Poland
China Portugal
Congo Republic of Korea
Costa Rica Republic of Moldova
Côte d'Ivoire Romania
Croatia Russian Federation
Cuba Saint Lucia
Cyprus Senegal
Czech Republic Sierra Leone
Democratic People's Republic of Korea Singapore
Denmark Slovakia
Dominica Slovenia
Estonia South Africa
Finland Spain
France Sri Lanka
Gabon Sudan
Gambia Swaziland
Georgia Sweden
Germany Switzerland
Ghana Tajikistan
Greece The former Yugolsav Republic of Macedonia
Grenada Togo
Guinea Trinidad and Tobago
Guinea-Bissau Turkey
Hungary Turkmenistan
Iceland Uganda
India Ukraine
Indonesia United Arab Emirates
Ireland United Kingdom
Israel United Republic of Tanzania
Italy United States of America
Japan Uzbekistan
Kazakhstan Viet Nam
Kenya Yugoslavia
Kyrgyzstan Zimbabwe
Latvia


Another cost-saving feature of international patent practice is the European Patent Convention (EPC), which is compatible with the Paris Convention and the PCT and which enables you to file a single European patent application and designate any one or more of nineteen (19) European countries in which you wish the patent to issue:
Austria      Liechtenstein
Belgium Luxembourg
Cyprus Monaco
Denmark Netherlands
Finland Portugal
France Spain
Germany Sweden
Hellenic Republic Switzerland
Italy United Kingdom
Ireland


You can optimize your foreign patent expense and protection if you carefully choose the countries in which you seek protection. First, identify the countries in which you see the greatest market and the countries in which the potential product is most likely to be competitively manufactured. Second, limit your selection to those manufacturing/marketing countries which are most appealing: Where might the patent be best policed? Where can infringement be most easily detected? Where are your subsidiary/parent/joint venture partner companies located? Where is your largest customer? Your fiercest competitor?

Awareness of these few considerations can maximize your patent protection abroad while minimizing your capital investment, and postponing or even avoiding entirely the investment of that capital.


TRADEMARKS

There are a number of international treaties which affect trademark rights.

The three countries of Belgium, Netherlands and Luxembourg have joined together under the Benelux Union to form a single trademark territory. One registration provides protection in all three countries.

A number of countries have formed the Madrid Union, wherein one international registration will be recognized in all the member states unless specifically refused by a member state. Each member state may conduct its own examination. Currently, member states include European countries (except generally the U.K. and Ireland), African States and the Russian Federation. The Union applies to: (1) a national of a European Union member State; (2) a national of a country outside the European Union, if that country is a member of the Paris Convention; (3) a national of a State which is not a member of the European Union or the Paris Convention, but who has his domicile or real and commercial establishment in a member State of the European Union or the Paris Convention; and (4) a national of a country which is not a member of the European Union or the Paris Convention, if that country grants the same protection to the nationals of each member State of the European Union as to its own nationals and which recognizes the registration of a community trademark. The same Paris Convention referred to earlier with respect to patents provides a six (6) month right of priority: a party may claim a filing date in a Madrid Union country up to six months earlier based on his U.S. filing date. The term of the registration is twenty years. French-African states and the island of Madagascar have been made into one unified trademark territory under a treaty known as "OAMPI". The Paris Convention gives certain rights afforded to citizens of a member state to nationals of other member states. As previously indicated, applications for patents may receive the benefit of a one-year priority date; applications for trademark registration receive a six-month priority date based on the home country filing date.

A new and separate union for the international registration for trademarks was founded in 1973, the Trademark Registration Treaty. International registration may be obtained under this treaty without first having to register the mark in the applicant's home country. The registration is effective for ten years and is renewable. Although signed by fourteen countries, only five countries have deposited an instrument of accession to the treaty, namely: Congo, Gabon; Togo Republic, Burkina Faso; and the Russian Federation.

In the United States a foreign applicant, whose country of origin is a party with the U.S. to a trademark convention, or extends reciprocal rights to U.S. nationals, may base a U.S. application on: (a) ownership of a foreign trademark registration; or (b) ownership of a foreign application if the U.S. application is filed within six months of foreign filing.

If a mark has been registered in a foreign country, no use in commerce must be alleged. If relying on a foreign application, no U.S. registration will issue until the applicant alleges use or the foreign registration issues. Use of the mark is required to maintain a valid registration. The use re-quirements for obtaining U.S. trademark registrations have been eased for U.S. nationals, too, under a new law effective November 1989.

While the U.S. is only now eliminating its traditional requirement for actual use of the trademark on the goods in commerce before application for registration can be filed, most other countries have never had that requirement. Australia, Canada, West Germany, Italy, Japan, Great Britain, and Switzerland permit filing with only an intent to use. France and Sweden do not even require an intent to use in order to file.


COPYRIGHT

There are a number of international treaties which affect copyright, the most important of which are the Universal Copyright Convention, to which the U.S. has long been a party, and the premier treaty, the Bern Union, to which the U.S. has finally fully acceded with the amendments to U.S. law effective March 1, 1989.

The Universal Copyright Convention (UCC), adopted by eighty-one countries including the United States and the Russian Federation, requires that each country treat nationals of other member countries the same as they do their own citizens. It gives copyrightable works protected by the UCC the same rights as domestic works. The UCC excuses compliance with all domestic member country formalities with respect to unpublished works, and published works which display the copyright notice, name of owner, and year of first publication. In the United States, the Congress has invoked a restrictive provision of the UCC to require domestic formalities in cases of works first published in the United States by U.S. citizens or UCC member country nationals. Accordingly, foreign nationals can begin a copyright infringement action without having a copyright notice or a recordation. U.S. citizens cannot. The UCC requires nationals to comply with the formalities of their own countries and avoids foreign formalities.

The Bern Union includes all major countries including European countries, Japan, and most recently, the United States. The Union has minimum requirements that must be met. Namely: the duration of the copyright must be at least for the life of the author plus fifty years, and copyright must be automatically granted without the need for formalities. Accordingly, the United States has formed a two-tier system. Works whose author's domicile is a foreign state adhering to the Bern Convention and where publication occurs first in a Bern State (except the U.S.) are exempt from the registration application prerequisite. Most other works, most importantly those of U.S. domiciliaries, must comply with the formalities of notice and filing before an infringement action may be brought.

There are also two Pan American Conventions: (a) Mexico City Convention of 1902; and (b) Buenos Aires Convention of 1922. These are agreements among approximately 17 South American member countries wherein a copyright obtained in one state is valid in the other states without formalities provided a notice reserving all property rights is included. The notice must read "copyright reserved" or "all rights reserved". This is not a very strong union, as the United States has separate treaties with most of the member countries. The Pan American Union is primarily of benefit to U.S. citizens who wish to obtain protection for their works in Bolivia.

The United States also has special treaties with a number of countries such as Taiwan to confer reciprocal copyright protection to U.S. and Taiwan citizens. In addition, the U.S. has enacted special legislation which extends U.S. copyright law to Guam and the U.S. Virgin Islands.

International protection for patents, trademarks and copyrights is widely available and becoming more and more necessary as the global marketplace becomes more a reality to all businesses, not just large multinational corporations. Careful planning can result in inexpensive yet extensive and valuable protection for products in international markets.
 		  
 
 
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Iandiorio & Teska  260 Bear Hill Road  Waltham, MA 02451
Telephone: 781.890.5678   Fax: 781.890.1150    Email: admin@iandiorio.com
Copyright © 1996 - 2002 Iandiorio & Teska.  All rights reserved.
This web site may be considered an advertisement in some jurisdictions.