1. Intellectual Property 1. Intellectual Property
eCommerce Intellectual Property Rights (IPR)
Just as there are more channels than ever through which to sell your products, there are now more opportunities for others to steal your trademarks and copy your designs. The rights granted by a U.S. patent, trademark registration, copyright, or mask work (design of a semiconductor chip) registration extend only throughout the United States.- Rights provided by a foreign country may be greater or less than rights provided under U.S. law.
- There is no such thing as an international patent, trademark, or copyright.
- Copyright protection depends on national laws, but registration typically is not required.
- There is no real shortcut to worldwide protection of intellectual property.
- However, some advantages and minimum standards for the protection and enforcement of intellectual property exist under treaties or other international agreements.
International Agreements
The oldest treaty relating to patents, trademarks, and unfair competition is the Paris Convention for the Protection of Industrial Property. The United States and more than 160 other countries are parties to this treaty. The Paris Convention sets minimum standards of protection and provides two important benefits: the right of national treatment and the right of priority. National treatment under the Paris Convention means that a signatory country will not discriminate against nationals of another signatory country in granting patent or trademark protection. The rights provided by a foreign country may be greater or less than those provided under U.S. law, but the rights provided will be the same as those that the country provides to its own citizens.The Paris Convention’s right of priority allows the applicant one year from the date of the first patent application filed in a Paris Convention country (six months for a design or trademark) in which to file in other countries. This means that after the first filing, neither publication nor sale of an invention will jeopardize patentability in countries that grant a right of priority to U.S. applicants, as long as their application is submitted before the end of the priority period.
Not all countries adhere to the Paris Convention, but similar benefits may be available under another treaty or bilateral agreement. These substantive obligations have been incorporated into the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and are binding on WTO members.
The United States also is a party to the Patent Cooperation Treaty (PCT), which:
- Provides procedures for filing patent applications in its member countries.
- The PCT allows you to file one “international” application with the U.S. Patent and Trademark Office to designate member countries in which a patent is sought.
- Filing the international application extends by 18 months the period in which you may fulfill the national requirements for each country.
Additionally, the Hague Agreement Concerning the International Deposit of Industrial Designs (also known as the Hague System) allows for registration of up to 100 industrial designs in member countries. You can apply using a single application and in a single language.
The United States is also a member of the Madrid System for the International Registration of marks, which allows for filing of trademark protection in member countries.
Contact the U.S. Patent and Trademark Office to file a patent, trademark, or design registration application outside the United States.
Trademark Law
- A trademark is a word, symbol, name, slogan, or combination of these that identifies and distinguishes the source of sponsorship of goods and that may serve as an index of quality.
- Service Marks perform the same function for businesses dealing in services rather than goods.
- The United States provides for protection of a mark, registered or not, if that mark has become well known through domestic or international use.
- However, in most countries, trademark rights are acquired only through registration, and many countries require local use of the registered mark to maintain the registration. Whether a given mark can be registered in a particular country will depend on the law of that country. For example, some countries do not protect service marks.
If your business is expanding, you may face a period of time in which your mark is known and perhaps registered in the United States. Even though you may not be quite ready to do business abroad, you should, as soon as possible, decide where you will need trademark protection and protect your rights by filing in those countries. Deciding where to file is a business issue—you must balance the expense of registration against its benefit. At a minimum, you will want to file in countries in which you will do business. You may also find it desirable to file in countries that are known sources of counterfeit goods, although some national laws require local use to maintain a registration.
Although trademark laws impose no deadlines for registering a mark, you should register promptly. If you wait too long, you might find someone else has already registered it, and then it may be costly—or even impossible—to recover it.