As we continue to become a global economy, businesses must take additional steps to protect their patents and trademarks abroad. If you have a patent or trademark in the United States, you will not be protected in other countries. You must apply to individual countries or through respectable international organizations in order to protect yourself against international infringement. Often times, you are in a race against other patent or trademark owners to be the first to file applications or you risk losing your rights. In order to win the race, you must be quick and apply immediately to the countries you are seeking protection in. However, you must also do your research beforehand and follow up with each country to ensure you are actually registered and protected.
1. Take advantage of the World Intellectual Property Organization (WIPO) resources.
If you are planning to make or sell any products outside the United States, you will need to get trademarks and patents abroad. Otherwise, anyone in the world can infringe on your patent or trademark. This can turn into a disaster if the infringer files applications in other countries first and prevents you from using your own patent or trademark globally. Keep in mind that there is no such thing as one international trademark or patent application. However, there are many resources and organizations available to help you get the protection you need in the countries you need. For example, the WIPO is a good resource to secure your trademark and patent in many important regions.
Generally, there are three ways to get patents in other countries:
- Apply to countries individually. You can apply to countries individually with a patent or trademark. This is absolutely necessary for countries that are not part of any collective organization such as the Paris Convention or Patent Cooperation Treaty (PCT).
- Apply to countries that are part of the Paris Convention. Once you are successfully registered with the United States (a participating country of the Paris Convention), you have 12 months to then apply to any other participating countries. However, you must apply to each participating country individually. If your application is approved, you get the protection from the other countries as your initial filing date in the United States.
- File an application under the PCT, which is administered under the WIPO. This is the closest you can get to an international patent and trademark application. There are over 125 countries that participate under the PCT. The benefit of this application is you can file once and that puts all participating countries on notice that you are applying for protection. Also, if you are approved through the WIPO, you are usually guaranteed approval by the participating countries.
2. Do your research before applying.
- Visit WIPO's official website – this website gives you more in-depth information on how to apply for international patents and trademarks and which countries are participants.
- Be sure that you’re already registered in the United States. This is usually a first step before getting patents in many other countries. You can use the resources on DocStoc.com or it’s partner Legal Zoom to apply for your United States patent or trademark.
- Brainstorm which countries you should apply to first. The patent and trademark registration process is lengthy and expensive. You need to first consider where you really need the protection. Which countries do you foresee your product or trademark being used? Which countries do you foresee your product being made? And which countries do you think you need protection to prevent others from stealing your patent or trademark? Always think in the long term. Don’t be stuck in a situation where it’s too late to get a patent or trademark in another country because someone else beat you to it or someone else is already selling or producing your stuff.
- Know which countries are not protected under any international organization such as the WIPO or the Paris Convention. Remember if the country does not participate in these organizations, you cannot get protection applying through these organizations. Do your research and determine if you need to apply to those countries individually. There may be additional restrictions (such as filing in a particular language) that you need to research before applying.
- Get legal counsel if you have any questions or need help in the registration process. If you want to get the protection, be sure that you get it right the first time. Don’t risk losing protection because of errors due to inexperience – an experienced attorney can help ensure your registration is successful.
- Follow up. The registration process is very lengthy and it can be easy to lose track of where you are in the maze. Always be sure to follow up with the countries you are applying to. Check to see if you need to supply additional information or if you can do anything to expedite the process.