Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country. Similarly, local laws apply to trademark, copyrights, and other forms of intellectual property in each jurisdiction.
IPR Toolkits for more than 20 countries and regions are provided on the StopFakes website. The IPR Toolkits provide detailed information about protecting and enforcing intellectual property rights in specific markets, along with contact information for local IPR offices abroad and US Government officials available to assist you. The information provided by no means constitutes legal advice and should not be a substitute for advice of counsel. Its intended purpose is to provide an overview.
How do I Protect my Intellectual Property Overseas?
Many small companies experience difficulty protecting their IPR abroad, including in China, as they are not aware of how to obtain and enforce rights in foreign markets. Some basic, often low-cost, steps small companies should consider include:
- Working with legal counsel to develop an overall IPR protection strategy;
- Developing detailed IPR language for licensing and subcontracting contracts;
- Conducting due diligence of potential foreign partners (The U.S. Commercial Service can help, see Export.gov);
- Recording their U.S.-registered trademarks and copyrights with Customs and Border Protection; and
- Securing and registering patents, trademarks, and copyrights in key foreign markets, including defensively in countries where IPR violations are common.
How do I Register my Patent, Trademark, or Copyright Overseas?
Patents and trademarks are territorial and must be filed in each country where protection is sought. A U.S. patent or trademark does not afford protection in another country. For more information on how to apply for individual patents or trademarks in a foreign country, contact the intellectual property office in that country directly. A list of contact information for most intellectual property offices worldwide can be found at the World Intellectual Property Office(link is external). However, the Patent Cooperation Treaty (PCT) streamlines the process of filing patents in multiple countries. By filing one patent application with the U.S. Patent and Trademark Office (USPTO), U.S. applicants can concurrently seek protection in up to 143 countries. For information about filing an international patent application under the PCT, visit the USPTO website: Click here .
The Madrid Protocol also makes it easier to file for trademark registration in multiple countries. By filing one trademark registration application with USPTO, U.S. applicants can concurrently seek protection in up to 84 countries. Information about filing an international trademark registration application under the Madrid Protocol is available from the USPTO website.
Although most countries do not require copyright registration in order to enjoy copyright protection, registration can offer several benefits, such as proof of ownership. The United States has copyright relations with most countries throughout the world, and as a result of these agreements, we honor each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country. A listing of countries and the nature of their copyright relations with the United States is available here(link is external).