U.S. patents and trademarks do not generally provide protection in other countries. Some U.S companies have found that foreign manufacturers copy their products, packaging, brochures, and logos. For this reason, those U.S. companies seek patent, copyright, and trademark protection in potential foreign markets in advance of exporting their products to those markets or launching a branding program. It is thus important to know the differences between U.S. and foreign laws with respect to patents, copyrights, and trademarks.
U.S. companies should be aware that the U.S. is virtually the only country in the world that follows a “first-to-invent” system. In other words, a patent, that otherwise meets the requirements of patentability, is granted to the person who first conceived and practiced the invention. Most other countries follow a “first-to-file” system. Under the first-to-file system, priority is based on the date of filing of the application, rather than the date of actual invention.
The U.S. also provides the inventor a 12-month period after an offer for sale, publication, or public disclosure of an invention to file for a patent application. Most foreign countries do not offer a 12-month period to file. Instead, most foreign countries follow an absolute disclosure rule where a patent application must be filed before any offers for sale, publication, or public disclosure of the subject invention. In addition, certain patent subject matters are not patentable in foreign countries. U.S. companies should be aware that certain business method and software innovations are not considered patentable by, for example, the European Patent Office (EPO). In addition, while the U.S. Patent and Trademark Office (USPTO) allows applicants to file for and claim priority to certain improvements on a pending application through a continuation or continuation-in-part (CIP) application, the EPO does not. Advice of intellectual property counsel before offering any invention for sale, publishing any information on the invention, or publicly disclosing, marketing, or selling any products in the U.S. or abroad is prudent.
U.S. companies should also be aware that certain countries have different requirements for protection under their respective copyright laws. There are two principal international copyright conventions, the Berne Union for the Protection of Literary and Artistic Property (Berne Convention) and the Universal Copyright Convention (UCC). As a member of the Berne Convention, U.S. copyright laws are generally uniform with those in other Berne Convention member countries. Generally, under the Berne Convention, the works of an author (who is a national or domiciliary of a country that is a member of the Berne Convention) or works first published in a member country or published within 30 days of first publication in a member country may claim protection under the Berne Convention.
Although there are no formal requirements in the Berne Convention, under the UCC any formality in a national law may be satisfied by the use of a notice of copyright in the form and position specified in the UCC. A UCC notice should consist of the symbol © accompanied by the year of first publication and the name of the copyright proprietor (example: © 2008 John Doe). This notice must be placed in such manner and location as to give reasonable notice of the claim to copyright. The use of a copyright notice is optional in the U.S. However, U.S. copyright laws provide certain advantages for use of a copyright notice (e.g., the use of a copyright notice can defeat a defense of “innocent infringement.”
A copyright owner who seeks copyright protection for his or her work in a particular country should do so before the work is published anywhere. Certain countries have perquisites that need to be fulfilled before publication. In addition, there are some countries that offer little or no copyright protection to any foreign works. Advice of intellectual property counsel before publishing any work in the U.S. or abroad is prudent.
U.S. companies should be aware that almost all countries allow for formal registration and protection for trademarks and each country or regional office maintains a formal registrar of trademarks that controls application requirements for all trademark registrations and renewals. Each registrar facilitates the examination, search, and potential oppositions by third parties for each application. In other words, foreign countries may have different requirements for registration than those required by the USPTO.
Most countries, however, generally follow the World Intellectual Property Organization’s system of international registration of marks, which is governed by the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. Using these treaties, an applicant could claim priority to a foreign trademark application based on a U.S. trademark application if certain requirements are fulfilled.
Under these treaties, an application for registration of a trademark must first be filed with the appropriate national or regional trademark office following a number of requirements. For example, the application must contain a clear reproduction of the mark filed for registration, including any colors, forms, or three-dimensional features and a list of goods or services to which the mark would be used in connection with. Advice of intellectual property counsel for the use of, protection of, and registration of any trademarks, service marks, logos, and slogans in the U.S. or abroad is prudent.
If you are interested in additional information on the topic of U.S.and international IP laws, or if you have any questions, please contact a K&K attorney. K&K offers an array of services in the areas of intellectual property including patents, trademarks, copyrights, trade secrets as well as intellectual property litigation and enforcement. Further information on these and other services is available at www.kk-llp.com.