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Protecting intellectual property outside the US

By Cheryl Burbach

 

Protecting intellectual property rights—trademarks, copyrights, patents, and trade secrets—is crucial for businesses operating globally. While many companies focus on securing these rights within the United States, it's equally important to safeguard them in non-US countries to prevent infringement and ensure exclusivity in international markets. Proactively adopting protection measures early is usually much less expensive than fighting an infringer without having secured registrations, patents, or taking steps to preserve confidentiality first. 


Here are some essential strategies for protecting trademarks, copyrights, and patents outside the US:

 

Trademark Protection

 

Trademarks can be any word, design, smell, color, or other device used to identify the source of a product or service. 

 

  • Research and Registration: Conduct thorough trademark research to ensure the proposed mark is not already in use in the target country. Register the trademark with the respective national or regional trademark office to establish legal ownership and exclusive rights.

  • Legal Representation: Engage legal counsel who are connected with international trademark firms and may be well-versed in the intellectual property laws of the target country. They can provide valuable guidance on registration procedures, legal requirements, and enforcement measures.

  • Use Notice and Marking: It can be an effective deterrent if a trademark owner displays the necessary trademark symbols (™ or ®) as applicable. Different countries have rules about whether use of these symbols is permitted, so obtaining legal advice first is recommended.

  • Monitor and Enforce: Regularly monitor the market for any unauthorized use or infringement of your trademark. Take swift legal action against infringers to protect your brand's reputation and market share.

  • Customs Recordation: Consider recording your trademarks with customs authorities in target countries. This can help prevent the importation of counterfeit goods and unauthorized products bearing your trademark.

 

Copyright Protection

 

Copyright protects the way a work is expressed (as opposed to a concept or invention). Works eligible for copyright protection include things such as software code, graphic artwork, and textual content.

 

  • Registrations: File copyright applications in the US, which are fully enforceable in many countries due to the Berne Convention and the WIPO Copyright Treaty.  Registrations and the treaties provide standardized protection for copyrighted works across multiple countries. Many governments offer copyright protection automatically upon creation, but registration may still be advisable for additional benefits.  In countries where copyright registration is necessary or beneficial, submit applications to the relevant copyright office or authority. This can provide stronger evidence of ownership and facilitate legal actions against infringers.

  • Use Notice and Marking: Display copyright notices (e.g., © [Year] [Owner]) on your creative works to assert your rights and deter potential infringers. Utilize digital rights management (DRM) tools for digital content to control access and usage.

  • License Agreements: If licensing your copyrighted works to foreign entities, draft clear and enforceable license agreements specifying terms of use, territorial restrictions, and enforcement mechanisms.  Take steps to ensure that your licensees are not registering your trademarks in their name in foreign countries.

 

Patent Protection

 

Patents provide legal rights granted by a government to an inventor (or assignee), giving them exclusive rights to their invention for a limited period of time.

 

  • Global Filing Strategy: Develop a comprehensive patent filing strategy that includes key international markets relevant to your business. Utilize mechanisms such as the Patent Cooperation Treaty (PCT) to streamline the application process in multiple countries.  Importantly, many countries require patent applications be filed prior to any disclosure of the invention.  The U.S. provides a one-year grace period to file a patent application.

  • Local Expertise: Again, work with patent attorneys or agents who possess expertise in the patent laws and practices of your target countries. They can assist with drafting strong patent applications, responding to office actions, and navigating local patent systems.

  • Patent Translation: Ensure accurate translation of patent documents into the local language of each target country to comply with filing requirements and facilitate examination by patent offices.

  • Enforcement: Be prepared to enforce your patent rights through legal actions, including litigation or administrative proceedings, against infringers or parties engaging in patent-related disputes.

  • Regular Maintenance: Stay updated with renewal deadlines and maintenance fees for patents in different countries to avoid inadvertent lapses in protection.

 

Trade Secrets

 

A trade secret is confidential information that provides a business with a competitive advantage over others who do not know or use the information. The trade secret is information that is generally not known, has value and, most importantly, has been kept confidential.  Unlike patents, trademarks, or copyrights, which require registration and disclosure to obtain legal protection, trade secrets are protected primarily through secrecy and confidentiality measures.  Protecting trade secrets in non-US countries is essential for businesses looking to safeguard valuable proprietary information and maintain a competitive edge.

 

  • Limit Access: One key strategy is to establish robust confidentiality measures internally, including employee training on the importance of trade secret protection and implementing strict access controls.

  • Confidentiality Agreements: Additionally, companies should utilize non-disclosure agreements (NDAs) with employees, contractors, and business partners to legally bind them to confidentiality obligations.

  • Research Trade Secret Laws in Critical Countries: When operating in international markets, it's crucial to conduct due diligence and assess the legal framework regarding trade secret protection in each country. This may involve consulting with local legal experts to navigate specific laws, regulations, and enforcement mechanisms related to trade secrets. Regular audits and monitoring of internal processes can further reinforce protection efforts and mitigate the risk of unauthorized disclosure or misuse of trade secrets.

 

In short, sufficiently protecting trademarks, copyrights, patents, and trade secrets in non-US countries requires a proactive and strategic approach. By conducting thorough research, seeking professional assistance, utilizing international agreements, and enforcing your intellectual property rights diligently, businesses can safeguard their innovations and creative assets on a global scale. 

 

Cheryl L. Burbach

Trademark and Copyright Attorney | Partner

Hovey Williams LLP

D 913.232.5037




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