Protecting Intellectual Property in a Wild World

by Ruth Binger
Danna McKitrick, PC

Take the right steps to protect your intellectual property… at home and abroad.

Your company is an “A” player, and it has done everything right in the U.S. to protect its intellectual property (IP). You have not just relied upon a “smile”—you’ve invented a unique product called Superstar® widget, and it’s not yet offered by your competitors. Vast amounts of resources have been poured into its development. Prior to introducing the Superstar® widget, you exercised due diligence by using the IP Awareness Assessment Tool on the U.S. Patent and Trademark Office website to identify what IP you have, whether it has value, and if it can be protected under U. S. law.

Protection at Home
Upon identifying your IP, the company retained capable attorneys who were successful in obtaining U.S. trademark registrations on the corporate name, non-functional design and logo so customers could more easily identify the Superstar® widget and its association with the company. Superstar® widget packaging correctly evidences all registered trademarks.

You made a wise expenditure on patents, and the company has received patents on the Superstar® widget process. Further, copyright registrations with the U.S. Copyright Office have been obtained on your website, web video and associated software, and you are giving notice to the world of your ownership by using the appropriate symbol: “© Company 2012.”

Last but not least, the company has developed significant nonpublic information that would be valuable to a competitor with respect to its manufacturing processes, research data and operations information, and trade-secret self-help best practices are being used to protect this nonpublic information. In a 2013 report, the Commission on the Theft of American Intellectual Property found that most IP losses are committed within U.S. borders. Your self-help practices include: limiting distribution; marking “confidential” on all proprietary and trade-secret documents; securing facilities and files; physically isolating all trade secrets and confidential information by keeping them off the company’s network to prevent cyber theft; using confidentiality contracts with employees and third parties; creating and complying with rigorous secrecy procedures; and conducting ongoing training. You are also marking confidential electronic files through techniques such as “meta-tagging,” beaconing” or “watermarking,” so you know if protected information has left your authorized network, and you can potentially identify the location of files in the event they are stolen.

Congratulations! The company is a winner, in that it has used the entire gamut of U.S. IP law to protect its Superstar® widget: trademarks, copyrights, patents and trade secrets.

The Wild World: Protecting Your IP Abroad
Now, it is time to venture into the wild world. The company has identified countries to which it would like to export its Superstar® widgets and is considering both direct and indirect exporting methods. You have continued your due diligence, staying up many nights searching the web, and your worries are mounting regarding protection of the company’s IP due to: (a) counterfeiting: company trademarks will be placed on competitive goods; (b) piracy: content on website, web video and associated software will be used to sell competitor goods; and (c) theft: patents will be utilized to sell competitive goods.

Here’s what you need to know about protecting your IP abroad:

  1. U.S. IP laws confer little to no protection overseas. Federal protections extend only throughout the United States, its territories and possessions. In order to get protection for your IP in a foreign country, you have to apply for protection under the laws of that country. The company needs to seek trademark/patent/copyright protection in large potential markets well in advance of actually exporting the goods. The best defensive strategy is to obtain a foreign, country-specific trademark/patent/copyright registration. Such registrations aid in enforcement and prevent others from filing.
  2. By filing one trademark registration application with the U.S. Patent and Trademark Office, U.S. applicants can seek protection in up to 84 countries. In its 2011 report, “Estimating the Global Economic and Social Impacts of Counterfeiting and Piracy,” the International Chamber of Commerce estimates the total global economic value of counterfeit and pirated goods is as much as $650 billion per year. Most countries recognize trademark rights arising from filing, whereas the U.S., United Kingdom, Australia and Canada recognize rights arising from use. Conduct a search in each country to determine if your trademarks are available for registration. Note that some companies report a two-year backlog and squatting (registering someone else’s product for purposes of selling back the trademark) in China. Resources to protect innovations and market products safely at home and abroad can be found at www.stopfakes.gov/business-tools. The Madrid Protocol, an international treaty among 88 countries administered by the World Intellectual Property Organization, makes it easier to file for trademark registrations in multiple countries at the same time. To file for protection in multiple countries, visit uspto.gov/trademarks/law/madrid.
  3. Patent laws should be explored by contacting the country’s intellectual property office. Visit wipo.int/directory/en/urls.jsp to get started. Use the International Patent Legal Administration to take advantage of the Patent Cooperation Treaty, which streamlines the process to file patents in multiple countries: uspto.gov/patents/init_events/pct.
  4. Copyrights must also be filed in each country where protection is sought, though there is some protection under international treaties or other international agreements with respect to copyrights. Under the Berne Convention, copyrights in all Berne and World Trade Organization countries receive automatic protection without any formality (such as registration, copyright notice, etc.) that is extended on a basis of national treatment. For example, a U.S. author suing in France under French copyright law is entitled to the same protection as a French author suing in France under French copyright law. Berne Convention members can be found at: wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=15.

Though the global market is wild, it can be navigated so your company can protect its underlying IP while increasing your sales internationally. iBi

 


Source URL: https://www.peoriamagazines.com/ibi/2014/oct/protecting-intellectual-property-wild-world