When business people have inventions they want to protect, the first place they turn to is the United States Patent and Trademark Office (USPTO). However, many people don’t realize that a patent does not protect an invention from infringement worldwide. U.S. patents only grant U.S. legal protections.
Today, we live in a global marketplace; companies are more likely to have a worldwide presence in manufacturing or commerce. If your invention has an international reach, it is important to understand the geographical limitations of your patent protection.
USPTO Patents Offer Only U.S. Protection
A patent issued by the USPTO only provides protection within the territories of the United States. What happens if your product will have potential exposure to infringement outside of the U.S.?
Intellectual Property owners must apply and secure patent protection in each country or foreign jurisdiction where they risk violation. Most countries have their own patent process which U.S. inventors will need to undertake. Working with foreign agencies may seem daunting, especially for a smaller enterprise; but an experienced U.S. patent attorney should be able to help business owners navigate the process.
Tips for a Foreign Intellectual Property Strategy
The USPTO suggests several steps that U.S. companies should consider taking to protect their intellectual property in foreign markets. These include:
- Working with an attorney to secure a fully global IP strategy. Pre-planning may save time and money in the future.
- Working with counsel to compose language for licensing and subcontracting contracts.
- Conducting due diligence investigations of existing or potential foreign business partners
- Recording U.S. registered trademarks or copyrights with Customs and Border Protection
- Securing and registering patents, trademarks, and copyrights in relevant foreign markets.
- Considering a defensive IP approach in countries where intellectual property violations like counterfeiting or piracy are common, e.g. China.
PCT Streamlines the International Application Process
The Patent Cooperation Treaty first signed in 1970 provides international patent applicants with the administrative convenience of filing one application to a governing body for review by each independent country where a patent is sought. However, it is crucial for applicants to understand that completion of the PCT application does not automatically mean that they will receive a blanket, international approval by each of the 145 countries who are privy to the treaty. Instead, each country will examine the common application and make their independent determination.
USITC Protection for Domestic Products
Though U.S. inventors must pursue patent protection to assert infringement claims overseas, there are protections available to prevent infringing products from entering the United States. If a product with a USPTO patent is being produced domestically, the United States International Trade Commission (USITC) can prevent infringing products from being imported.
We urge patent owners to consider their current and potential international market exposure when deciding how to fully protect their intellectual property. Contact the Miami intellectual property lawyers at Peretz Chesal & Hermann to discuss your global IP strategy.