In the United States, intellectual property law has its roots in our Constitution. Countries around the world have been protecting intellectual property since long before the American Constitution, yet there’s been little effort to consolidate the various individual application requirements and processes.
So, what does that mean? That international intellectual property can get messy. Generally, each country has developed its own intellectual property law and the protection of those laws extends only as far as the borders, meaning that a U.S. patent is only protected in America, a French patent is only protected in France, and so on. This puts a unique obstacle in the way of an inventor seeking intellectual property protection outside of his home country. Luckily, governments around the world recognized this problem and have used treaties to create systems that aim to simplify the process of filing for intellectual property protection across borders.
The terms of the specific treaties vary a little, but generally the process goes like this: file for protection in your home country then send your successful application to an international body that will forward it to specified countries that have signed the treaty.
The Patent Cooperation Treaty (PCT) is signed by 151 countries and allows inventors to file patents in those countries. The basic advantage of this system over a traditional file-in-every-country system is that this one allows the inventor to file one application one time and have it forwarded to 151 signatory countries. The inventor will also be issued a written prior art search report and patentability opinion. It is an important distinction that this treaty does not create an international patent, but a system for efficiently filing applications in multiple countries. The system works like this:
- File for a patent in your home country — Here, all normal procedures and requirements must be met and will vary depending on the country.
- File an international application — After the home country application is approved, you can then file an international application to a Receiving Office (RO), this office will probably also be in the home country.
- International search report & written opinion — After filing an international application, an international prior art search report along with a written opinion regarding the patentability of the invention will be issued by an International Search Authority (ISA). This will give the inventor an idea about the likelihood of success and thus allows the inventor to make an informed decision about the pursuit of a patent in each individual country without spending a lot of time and money on searching.
- International publication — 18 months after the filing date, the patent application is published internationally. The publication will not invalidate this patent, but it would invalidate any subsequent applicant from making similar patent claims.
- National stage — Finally, the inventor can pursue patent protection in each individual country. The advantage being that all research, applying, and publishing will already be done. At this stage basically the inventor will just forward the existing application along with an application fee and if necessary a translation of the application to the patent offices of the individual countries in which the inventor seeks protection. Each country will approve or deny the application based on its own standards.
The Madrid Protocol lays out a process for the international filing of trademarks that is similar to the patent process from the PTC. The difference is that trademarks, by their nature, do not require as much review to determine validity as do patents so the process is a little less involved here, but it generally goes like this:
- Apply for and register your trademark in your home country — Again, the home country must be a signatory to the treaty, here is a list of those countries. The trademark must first be approved in the home country and the requirements for a valid trademark vary by country.
- File an international application — Assuming the trademark is valid in the home country, the next step is to file an international application. Here, the applicant will choose the countries in which protection is sought. The applicant will also be responsible for an international filing fee along with the national filing fees of any country being applied to.
- Collection and review — The World Intellectual Property Organization (WIPO) will review the international application and then forward it to all specified countries and each country will approve or deny the trademark.
Copyrights differ from the other two forms of protection because they generally do not require registration to be effective. Copyrights are to protect works of creativity and authorship and exist upon fixation of that work into a specific medium. In other words, copyright protection exists as soon as a writer puts a pen to paper or fingers to a keyboard. Thus, an international filing system for copyrights doesn’t really make as much sense. However, the Berne Convention is a treaty that provides that countries who have signed on will recognize the copyrights of authors (and their works) of other signatory countries as their own. So, a work by an American author will automatically have copyright protection in all other signatory countries.
The international intellectual property attorneys at LawTrades have helped many others through this international intellectual property process and can help you too! If you are looking to file for intellectual property protection outside or inside the U.S., LawTrades is an ideal starting point.
By: Stephen Schlett