Protecting Intellectual PropertyProtecting Intellectual Property
Several general principles are important for effective management of intellectual property (“IP”) rights in most countries. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently overseas than in the United States. Third, rights must be registered and enforced in other countries, under local laws. For example, your U.S. trademark and patent registrations will not protect you in an overseas market. 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.
Patents are generally granted on a first-to-file basis. Similarly, trademarks are generally granted on a first-to-file [or first-to-use, depending on the country] basis, so you should consider how to obtain patent and trademark protection before introducing your products or services to markets overseas.
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 overseas. 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 the law in an overseas market. The U.S. Commercial Service can provide a list of local lawyers for the country that you are exporting to upon request, please contact our representatives in the country you are requiring information for www.export.gov/locations.
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 USG 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 foreign markets require constant attention. Work with legal counsel familiar with overseas 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 and piracy. There are a number of these organizations, both overseas or U.S.-based. These include:
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 US 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 U.S. 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 https://www.stopfakes.gov/Country-IPR-Resources
For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: https://www.stopfakes.gov/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.