Intellectual Property rights, patents, trademarks and things exporters should be aware of regarding IPR issues. This information is part of "A Basic Guide to Exporting" provided by the U.S. Commercial Service to assist U.S. companies in exporting.
Last Published: 7/9/2016
The formulation of the questions and answers that follow relies heavily, often verbatim, on material developed by the World Intellectual Property Organization (WIPO, wipo.int). The last set of questions and answers deals with filing a patent application in the United States, filing a trademark under the Madrid Protocol, and accessing additional training resources. This is a complex, rapidly changing area of law, and you should obtain competent legal advice.

What is a patent?

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. For an invention to be patentable, it must fulfill certain conditions, as listed below under “What kinds of inventions can be protected?”

What does a patent do?

A patent provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally 20 years.
 

What kind of protection does a patent offer?

Patent protection means that the invention cannot be commercially made, used, distributed, or sold without the patent owner’s consent. These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.

What rights does a patent owner have?

A patent owner has the right to decide who may— or may not—use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent has expired, the protection ends, and an invention enters the public domain: that is, the owner no longer holds exclusive rights to the invention, which becomes available to others for commercial exploitation.

Why are patents necessary?

Patents provide incentives to individuals by offering them both recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which contributes to the continuous enhancement of the quality of human life.

What role do patents play in everyday life?

Patented inventions pervade every aspect of life. Patented technologies range from electric lighting (held by Edison and Swan) and plastic (held by Baekeland) to ballpoint pens (held by Biro) and microprocessors (held by several companies, including Intel and Advanced Micro Devices).

In return for patent protection, all patent owners are obliged to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world.

The continuously increasing body of public knowledge, in turn, promotes further creativity and innovation among others. In this way, patents provide not only protection for the owner but valuable information and inspiration for future generations of researchers and inventors.

How is a patent granted?

The first step in securing a patent is the filing of a patent application. This document, which generally contains the title of the invention, as well as an indication of its technical field, includes the background and a description of the invention, provided in clear language and with enough detail to allow an individual with an average understanding of the field to use or reproduce the invention. Such descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention. The application also contains various claims: that is, information that determines the extent of protection granted by the patent.

What kinds of inventions can be protected?

To achieve patent protection, an invention generally must be of practical use and must show an element of novelty—some new characteristic not known in the body of existing knowledge in its technical field. (This body of existing knowledge is called prior art.) The invention must show an inventive step (one that could not be deduced by a person with average knowledge of the technical field). Finally, its subject matter must be accepted as “patentable” under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) are generally not patentable.

Who grants patents?

A patent is granted by a national patent office or by a regional office that does the work for a number of countries, such as the European Patent Office (EPO) and the African Regional Intellectual Property Organization (ARIPO). Under such regional systems, an applicant requests protection for the invention in one or more countries, and each country decides whether to offer patent protection within its borders. The WIPO-administered Patent Cooperation Treaty provides for the filing of a single international patent application, which has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed.

How can a patent be obtained worldwide?

At present, no world patents or international patents exist. In general, an application for a patent must be filed, and a patent will be granted and enforced, in each country in which you seek patent protection for your invention, in accordance with its national law. In some regions, a regional patent office (e.g., EPO or ARIPO) accepts regional patent applications, or grants patents, which have the same effect as applications filed, or patents granted, in the member states of that region.

Further, any resident or national of a contracting state of the PCT may file an international application under the PCT. A single international patent application has the same effect as national applications filed in each designated contracting state of the treaty. However, under the PCT system, in order to obtain patent protection in the designated states, a patent shall be granted by each designated state to the claimed invention contained in the international application. Further information concerning the PCT is available.

Procedural and substantive requirements for the grant of patents as well as the amount of fees required differ from one country or region to another. It is therefore recommended that you consult either a practicing lawyer who specializes in intellectual property or the IP offices of the countries in which you would like to secure protection. A list of URLs and a directory of national and regional intellectual property offices are available from WIPO.

Where can I find patent information?

To assist people in searching patent applications and granted patents, some national or regional patent offices provide free-of-charge electronic databases via the Internet. A list of URLs of such databases is available from WIPO, which also provides access, in image format, to a comprehensive electronic database, covering published international patent applications filed under the PCT system from 1978 to the present day. In addition, WIPO provides access to fully searchable text of descriptions and claims for PCT International Applications filed since July 1998. Where web-based databases are not available, patent information may be found in paper documents, on microfilms or CD-ROMs, or at the national or regional patent offices. Searchable Internet patent databases have significantly facilitated access to patent information. However, given the complexity of patent documents and the technical and legal skills required to use them, it is advisable to contact a professional patent attorney to execute a high-quality patent search. WIPO Patent Information Services (WPIS) provides free-of-charge services for users in developing countries who wish to obtain technical search results in relation to their inventions.

How can I find the patent laws of various countries?

The Collection of Laws for Electronic Access (CLEA) provides easy access to intellectual property legislation from a wide range of countries and regions, as well as to treaties on intellectual property administered by WIPO. Many national or regional patent offices provide information concerning national or regional legislation on their websites. WIPO makes available a list of URLs of national and regional intellectual property offices.

Can I obtain a patent for my software-related invention?

Procedural and substantive requirements for the granting of patents differ from one country or region to the next. In particular, practices and case law regarding the patentability of software-related inventions vary significantly across countries. For example, in some countries, inventions within the meaning of patent law must have a technical character, and software as such is not considered a patentable invention; in other countries, however, such requirements do not exist, and thus software is generally patentable subject matter.

It is therefore recommended that you consult a practicing lawyer who specializes in intellectual property or the IP offices of countries in which you wish to obtain protection. WIPO makes available a list of URLs and a directory of national and regional intellectual property offices. On the other hand, computer programs may be protected under copyright. However, according to a well-established principle, copyright protection extends only to expressions, not to ideas, procedures, methods of operation, or mathematical concepts as such.

Can I discuss the details of my invention with a potential investor before filing a patent application?

It is important to file a patent application before you publicly disclose the details of your invention. In general, any invention that is made public before an application has been filed would be considered prior art. (Although the definition of this term is not unified at the international level, in many countries, it means any information that has been made available to the public anywhere in the world, by written or oral disclosure.) In countries that apply the foregoing definition of prior art, the applicant’s public disclosure of the invention before filing a patent application would prevent him or her from obtaining a valid patent for that invention, since the novelty requirement would not have been met. Some countries, however, allow for a grace period, which provides a safeguard for applicants who disclosed their inventions before filing a patent application, and the novelty criterion may be interpreted differently depending on the applicable law.

If, for example, you must disclose your invention to a potential investor or a business partner prior to filing a patent application, that disclosure should be accompanied by a confidentiality agreement.

How do I file in the United States?

Patent applications and supporting documentation can be filed online with the U.S. Patent and Trademark Office. To get started, http://visit 1.usa.gov/10PdLXk.

Can I protect my trademark in more than one country at a time?

Yes, the Madrid Protocol provides a vehicle for applying for protection in multiple countries that are signatories to the protocol by filing one application and paying one fee in one national currency. For information on the Madrid Protocol and how to file, visit http://1.usa.gov/1zsCqPD.

How can I learn more about international intellectual property law?

The Global Intellectual Property Academy provides training programs in multilateral and country-specific contacts. For more information, go to http://uspto.gov/ip/training.

How long does it take to get a patent granted?

The wait in the United States is about 36 months. Government officials have stated that this length of time is unacceptable, and efforts are under way to reform the process and reduce wait times. Meanwhile, inventors must make do with a patent-pending designation.

How do I file a complaint if I think my intellectual property has been stolen?

A number of U.S. government agencies have joined forces to investigate and prosecute IP theft. For more information, visit http://www.stopfakes.gov.




Intellectual Property