European Union - Protection of Property RightsEuropean Union - Property Rights
Protecting Your Intellectual Property in the EU:
Several general principles are important for effective management of intellectual property (“IP”) rights in the EU. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in the EU than in the United States. Third, rights must be registered and enforced in the EU under local laws. For example, your U.S. trademark and patent registrations will not protect you in the EU. There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer copyright protection to foreign works in accordance with international agreements.
Granting patents registrations generally is based on a first-to-file [or first-to-invent, depending on the country] basis. Similarly, registering trademarks is based on a first-to-file [or first-to-use, depending on the country], so you should consider how to obtain patent and trademark protection before introducing your products or services to the EU market. It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government cannot enforce rights for private individuals in the EU. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in EU law. The U.S. Commercial Service can provide a list of local lawyers upon request .
While the U.S. government stands ready to assist, there is little we can do if the rights holders have not taken these fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the U.S. government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a law suit. In no instance should U.S. government advice be seen as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in the EU require constant attention. Work with legal counsel familiar with the EU laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.
It is also recommended that small- and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, both EU or U.S.-based. These include:
- The U.S. Chamber and local American Chambers of Commerce
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- The Coalition Against Counterfeiting and Piracy
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues -- including enforcement issues in the United States and other countries -- call the STOP! Hotline: 1-866-999-HALT or visit www.STOPfakes.gov.
- For more information about registering trademarks and patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199, or visit http://www.uspto.gov/.
- For more information about registering for copyright protection in the United States, contact the U.S. Copyright Office at: 1-202-707-5959, or visit http://www.copyright.gov/.
- For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website at http://www.stopfakes.gov/resources.
- For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: www.stopfakes.gov/businesss-tools/country-ipr-toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and also contain contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.
The U.S. Department of Commerce has positioned IP attachés in key markets around the world. Contact information is below for the IP attachés who cover the following countries:
Vacant – contact Dominic Keating
Vacant – contact Dominic Keating
Mexico, Central America and the Caribbean
India & South Asia
Vacant – contact Dominic Keating
For additional information on member states’ protection of property rights, please consult the Commerce Department’s Country Commercial Guides of the 28 EU member states found at the following website: EU Member States' Country Commercial Guides http://export.gov/ccg/
Transferring Customer Data to Countries outside the EU
The EU's current Data Protection Directive, which will be fully replaced by the General Data Protection Regulation (GDPR) as of May 25, 2018, provides for the free flow of personal data within the EU but also for its protection when it leaves the region’s borders. EU legislators put restrictions on transfers of personal data outside of the EU, specifying that such data could only be exported if “adequate protection” is provided. The European Commission (EC) is responsible for assessing whether a country outside the EU has a legal framework that provides sufficient protection for it to issue an “adequacy finding” to that country. As the U.S. has never seek to be “adequate” by the EC, U.S. companies can only receive personal data from the EU if they:
Self-certify to the EU-U.S. Privacy Shield framework, or
Refer to one of the legislation’s derogations, or
Include data privacy clauses in the contracts they sign with their European partners (contractual clauses or binding corporate rules).
The EU-U.S. Privacy Shield
On July 12, Secretary of Commerce Pritzker and EU Justice Commissioner Jourova jointly announced the EU’s approval of the EU-U.S. Privacy Shield. After two years of intense negotiations, the Framework becomes one of the mechanisms by which U.S.-based companies are able to transfer personal data of EU citizens from Europe to the U.S., thereby replacing the old Safe Harbor Framework invalidated by the European Court of Justice in October 2015. This agreement constitutes progress in greater privacy protections for EU citizens, but also in enhancing transatlantic trust.
The Department of Commerce will start processing company applications as of August 1, 2016.
For more information on the EU-U.S. Privacy Shield, go to https://www.commerce.gov/privacyshield
Guide to self-certification: https://www.commerce.gov/page/how-join-privacy-shield-guide-self-certification
Other options for transfers
Other legal basis for transfers are limited. EU-based exporters or U.S.-based importers of personal data can also satisfy the adequacy requirement by using appropriate safeguards, for instance by including data privacy clauses in the contracts they sign with each other. To fast track this procedure the European Commission has approved sets of model clauses for personal data transfers that can be inserted into contracts between data importers and exporters. The most recent were published at the beginning of 2005, and were complemented in 2010 by contractual clauses on “sub-processing” (outsourcing by an EU based exporter of its processing activities to other sub-processors outside the EU). Companies must bear in mind that the transfer of personal data to third countries is a processing operation that is subject to EU data protection legislation.
Important note: at present, there is a legal challenge to model contractual clauses before the Irish High Court. The outcome of this litigation could have far reaching implications for contractual clauses. We urge companies to monitor the situation and seek legal advice.
For more information: http://ec.europa.eu/justice/data-protection/international-transfers/transfer/index_en.htm
EU countries’ Data Protection Authorities (DPAs) and large multinational companies have also developed “binding corporate rules” (BCRs). A BCR is the international code of practice that a multinational corporation follows for transfers of personal data between the companies belonging to that corporation (worldwide intra-group transfer). BCRs are suitable for closely-knit, highly hierarchically structured multinational companies but not for loose conglomerates. The process of negotiation and approval of the BCRs is currently lengthy and complex, and has not yet been attempted by small or medium-sized companies.
European Union 28 Economic Development and Investment Law