Protecting Intellectual Property Abroad

By: Margaret M. Gatti, Esquire
October 1999
All Rights Reserved

Intellectual property is afforded a wide range of protection mechanisms in the United States, including patents, trademarks and copyrights. The grant of a U.S. patent, U.S. trademark or U.S. copyright confers on its owner exclusive rights to a protected work for a certain period of time and entitles the owner to a legal right of action in the event that the owner. s intellectual property rights are infringed.

The rights which are afforded the owner of a U.S. patent, U.S. trademark or U.S. copyright, however, are territorial in nature . that is, they are valid only in the United States and do not extend to foreign countries. This reality comes as an unfortunate surprise to many U.S. companies which venture into foreign markets.

To secure intellectual property protection outside the United States, a U.S. company must generally apply for a patent or register a trademark or copyright on a country by country basis. Granted, some countries have entered into treaties with other countries to ease the patent application process and the process for registering a trademark or copyright, but these treaties rarely provide rights that are enforceable by private parties in private litigation. As a consequence, U.S. companies seeking intellectual property protection overseas are well advised not to rely on a specific countries. treaties for intellectual property protection without giving due consideration to treaties. real significance.

Applying for a patent on a country by country basis or registering a trademark or copyright on a country by country basis is an expensive, time-consuming endeavor. Additionally, it is an endeavor which does not always prove worthwhile in that not all countries provide an established legal framework for enforcing intellectual property rights. Recognizing these realities, U.S. companies that venture into foreign markets should not despair as other protection mechanisms are available. These alternate protection mechanisms include entering into confidentiality agreements with foreign partners and registering with U.S. Customs to prevent the importation into the United States of goods which infringe on U.S. patents, U.S. trademarks and U.S. copyrights. These alternative protection mechanisms will be explored in future articles.