U.S.-based owners of various forms of intellectual property need to understand that U.S. laws typically do not protect against foreign infringement. The best means of protecting IP internationally is to seek formal registration in whatever countries your business operates.

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U.S. intellectual property registrations generally do not provide protection in other countries. In recent years, a number of U.S. companies have learned this lesson the hard way with foreign manufacturers who copy their products, packaging, brochures, and logos in foreign locations. The best means of protecting your IP internationally is to seek formal registration in whatever countries your company conducts business.

International Patent Protections – until 2011 when it passed the 2011 America Invents Act (also known as the Patent Reform Act of 2011), the U.S. was the only country in the world that followed a “first-to-invent” system, rather than a “first-to-file.” Since 2011, however, the U.S. and most other foreign jurisdictions follow the “first-to-file” system, where priority is based on the date of filing the application, rather than the date of the actual invention. And while the U.S. allows inventors 12 months after an offer of sale, publication, or public disclosure of an invention in which to file a patent application, most foreign countries do not. In fact, most foreign patent applications must be filed before any public disclosure of the subject invention or design. The scope of a foreign patent can also differ, so U.S. based patent owners are best suited to consult with experienced IP counsel very early in the process to ensure proper patent applications can be filed in the operated jurisdictions.

International Copyright Protection – Other countries may also differ in their requirements for copyright registration as well. Generally speaking, there are two principal international copyright conventions, the Berne Union for the Protection of Literary and Artistic Property (Berne Convention) and the Universal Copyright Convention (the UCC). Publication can also be an issue with copyrights, and U.S. based copyright owners should consult with experienced IP counsel and seek registration of any foreign copyrights before the content is published.

International Trademark Protection – foreign trademark registrations are handled by each country or region, each of which maintain their own registrar of trademarks that sets application requirements. While the requirements may vary from place to place, most countries follow the World Intellectual Property Organization’s (WIPO) system of international registration, governed by the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. Using these treaties, an owner can claim priority to a foreign application based on a U.S. application given certain requirements are met. Once again, experienced U.S. IP counsel should be consulted early to ensure all requirements and timelines are met.

For more information, see Differences Between US and International IP and International Intellectual Property.

Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.

This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.

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