IPR Protection in Foreign Markets

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IPR Protection in Foreign Markets

It is important to note that intellectual property rights are generally territorial. That is, a U.S. patent or trademark provides protection only in the United States; a Japanese patent provides protection only in Japan, etc. This means that, in most cases, the first step in protecting intellectual property beyond U.S. borders is for companies to register their trademark or patent with the appropriate authorities in each country where they seek protection or through international treaties that are administered by the World Intellectual Property Organization (WIPO). Copyrights may also be registered, but registration is not required for protection if the country in question is a member of the Berne Convention.

The Commerce Department recommends that companies seek assistance from an attorney familiar with the intellectual property laws of the country or countries where they are interested in conducting business to determine the costs and benefits of registration. The U.S. Department of Commerce can put companies in contact with U.S. Embassies overseas in order to help companies locate local patent and trademark attorneys.

Various U.S. Government agencies, including the Department of Commerce, Department of State, the U.S. Patent and Trademark Office, U.S. Copyright Office and the United States Trade Representative have IPR experts who regularly work with companies to help them protect their intellectual property. Teams from these agencies also work directly with foreign governments to enforce IPR trade agreements, raise IPR concerns bilaterally and conduct IPR training.

Seeking Assistance with Counterfeit or Pirated Products

The Trade Compliance Center and Commerce Department country experts stand ready to work with U.S. firms to help them protect their intellectual property at home and abroad. Commerce experts can suggest strategies to evaluate IPR problems encountered abroad and will work with our Embassies around the world to pursue a course of action for resolution of the problems. Commerce established a special telephone and web address designed specifically to deal with companies' international intellectual property concerns. Companies can contact Commerce at:

U.S. Department of Commerce
Trade Compliance Center
14^th Street and Constitution Avenue, NW
Washington, DC 20230
Phone: 1-866-999-HALT (4258)

Obtaining Patents and Trademarks in Foreign Markets: For more information on how to apply for 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 http://www. Once a company has registered for protection, it can use that country’s local laws to enforce its rights.

Obtaining Patents in Multiple Foreign Markets with a Single Application: The Patent Cooperation Treaty (PCT) streamlines the process for U.S. inventors and businesses wishing to obtain patent protection in other 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 115 countries. For an invention made in the United States, U.S. law prohibits filing abroad without a foreign filing license from the USPTO, unless six months have elapsed since filing a U.S. application. For filing an international patent application under the PCT, visit the USPTO website: http://wwwuspto.gov/go/pct/. Additional information on the PCT is also available on the WIPO website: http://wwwwipo.org/pct/en/index.html (Note: The international application itself does not lead to any patent protection in any country. It simply serves as a vehicle for centralized pre-processing of the application. Each application still must be reviewed and approved by each participating country.)
Obtaining Trademarks in Multiple Foreign Markets with a Single Application: The Madrid Protocol streamlines the process for U.S. trademark owners wishing to obtain trademark protection in other countries. By filing one international trademark application with the U.S. Patent and Trademark Office (USPTO), U.S. applicants can concurrently seek protection in up to 66 countries. Changes to a registration, e.g., transfers, name or address changes of renewals can be handled through a single procedural step. For filing an international trademark application under the Madrid Protocol, visit the USPTO website: http://www.uspto.gov/web/trademarks/madrid/madridindex.htm. Additional information on the Madrid Protocol is also available on the WIPO website: http://www.wipo.int/madrid/en/   (Note: The international application itself does not lead to any trademark protection in any country. It simply serves as a vehicle for centralized pre-processing of the application. Each application still must be reviewed and approved by each participating country.) Registering Copyrights in Foreign Markets Although most countries do not require copyright registration in order to enjoy copyright protection, registration can offer several benefits, such as proof of ownership. For information on registering a literary or artistic work for copyright protection abroad contact the U.S. Copyright Office at: 202-707-5959 or http://www. Enforcement: Using Local Laws Once a company has registered its patent or trademark, it can use local laws to enforce its rights. Copyright protection may also be enforced using local laws. Enforcement can be through civil suits, criminal investigations and prosecutions, or administrative procedures, where available. Generally, a company will need to work with the country's law enforcement authorities or through its courts to initiate investigations and lawsuits. Because of the legal complexities involved with IPR protection, it is suggested that the advice of an IPR lawyer be sought where needed. Countries must ensure that its IPR laws are implemented effectively and are consistently enforced.
EU Design Patent Protection

In the EU, there is a separate system of protection specific to designs called a Registered Community Design (RCD) right. The (RCD) lasts five years but can be renewed in blocks of five years up to a maximum of twenty-five. It gives the holder the exclusive right to use or license the design. The application process is managed by the Office for Harmonization in the Internal Market (OHIM) (http://oami.eu.int). Companies can register a RCD that covers them for all 25 EU member states.

The fee for registering one design is around 350 euro for five years of protection from the date of filing. Companies can include several different designs in the same application and can choose to keep designs confidential for up to 30 months after registration. Unregistered designs are protected for three years from the date the design was first made available to the public. They protect the design holder against deliberate copying. Registered designs are protected against copying and the independent development of similar signs.

For FAQs on the RCD see the following website: http://oami.eu.int/en/design/faq.htm

The Office of Harmonization in the Internal Market (OHIM) runs a design search tool in the registered community designs bulletin: http://oami.eu.int/en/design/bull.htm
China IPR Resources Contacting the U.S. Embassy for Resources in China:
The U.S. Embassy in Beijing and our Foreign Commercial Service (FCS) offices in China can provide in-country information about IPR enforcement resources. Companies can go directly to the FCS-China website at: http://www.buyusa.gov/china/en/   On this webpage, there are links to "Business service providers in China for U.S. companies," including legal services and investigative services. Also, FCS and the U.S. Embassy in Beijing have created an "IPR Toolkit" that provides more information on IPR protection specific to China: http://beijing.usembassy.gov/protecting_ipr.html

China: Additional Remedies When a Company Does not Hold Patent or Trademark Protection If a company does not hold patents or trademarks in China, there may be remedies available in China based on other types of rights and laws. A company should obtain local counsel to explore possible legal actions. The U.S. Embassy in Beijing can assist U.S. companies looking for attorneys who specialize in Chinese intellectual property rights protection.

Questions that may be asked in pursuing additional remedies include the following:

Have safety issues been identified as a result of the counterfeit products?

Is the product Underwriters Laboratories (UL) certified (or other certification mark)? If so, and the counterfeit bears the UL mark, there is a counterfeiting problem of another company's mark. UL has an aggressive anti-counterfeiting program that can help

Does the product falsely indicate it is made in America? If so, there may be a violation of the unfair competition laws.

Does the product bear the barcode of the legitimate product? If so, there may be administrative measures available regarding false barcoding.

Are there distinctive packaging materials or perhaps an instructional brochure? If so, there may be copyright protection, and a possible basis for U.S. Customs seizures.

Is there false General Administration of Quality Supervision, Inspection and Quarantine (AQSIQ) certification? (Note: AQSIQ is the Chinese law-enforcement administrative organ of the State Council in the field of quality, metrology, entry-exit commodities inspection, entry-exit health quarantine, entry-exit animal and plant quarantine, certification and accreditation and standardization.) If so, there may be Chinese product quality law remedies available.

Is the mark famous/well-known? Some international protection may be available. (Note: “Well-known” trade and service marks enjoy protection in most countries against signs that are considered a reproduction, imitation or translation of that mark provided that they are likely to cause confusion in the relevant sector of the public. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation.)

Are new product designs being developed? If so, design patent protection may be available.

Are there security devices/commercial strategies, etc., that the company can use to protect its name regardless of IP rights - controlling marketing channels, identifying legitimate/preferred suppliers/ strategies at trade shows, etc.?

Date Updated: October 03, 2008

[ Additional IPR Websites ] [ Additional U.S. Government Contacts ] [ Glossary of Key IPR Terms ] [ IPR Industry Contacts ] [ IPR Protection in Foreign Markets ] [ IPR Protection in the U.S. ] [ Questions to Consider Safeguarding Your IPR ]

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