In today’s global marketplace, Intellectual Property (“IP”) protection that is limited to the borders of the United States will be insufficient for many clients. International IP is more important than ever, but there is no single source of worldwide IP rights. Securing foreign protection involves many international treaties, multiple administrative routes, and filings before multi-national bodies and/or agencies in individual jurisdictions. Navigating this environment, including the cost-benefit analysis of the various options, should be done with the guidance of counsel experienced in International IP portfolio management to craft a pragmatic strategy and to oversee the maintenance and renewal of the rights obtained. Once an International IP portfolio is property arranged, enforcing International IP is an extremely selective undertaking that calls for careful consideration before taking action, often in consultation with Foreign Associate counsel to achieve localized remedies.
While there are a number of international agreements affecting IP, some of the most important treaties are:
The Paris Convention for the Protection of Industrial Property allows for the “right of priority” in the case of Patent and Trademark Applications that are first filed in one of the contracting states. The right of priority allows later Applications filed in other contracting states to be treated as if filed on the date of the first Application. The Paris Convention also creates enforcement remedies that are self-executing under the laws of many member nations.
The Patent Cooperation Treaty (“PCT”) facilitates the simultaneous pursuit of Patent Applications in each of the 154 member countries of the treaty.
The Madrid System for the International Registration of Marks, inclusive of the Madrid Agreement and the Madrid Protocol, affords a single Trademark filing with the World Intellectual Property Organization (“WIPO”) that can be “extended” to each of the 125 contracting nations, although there are significant drawbacks as compared to country-by-country Trademark Applications.
The Berne Convention grants the “automatic” protection (subject to certain conditions) of literary and artistic works in each of the 179 contracting states.
Beyond these foundational treaties, regional IP agreements can provide efficient alternatives to national filings. The most notable of such arrangements lead to the creation of the European Union Intellectual Property Office (“EUIPO”) and the European Patent Organization (“EPO”), but similar benefits can be secured through agencies such as the Organisation Africaine de la Propriété Intellectuelle (“OAPI”), and still other benefits may be available through mutual-recognition treaties in areas such as Central America and the Andean Pact nations of northern South America.
Strong Foreign Associate Relationships
Regardless of the avenue by which International IP is sought, many filing will involve administrative procedures that ultimately require the assistance of specialized counsel in the particular country or region. Enforcement of IP in a foreign country is almost always a matter before the locals courts, customs authorities, and other agencies, such that local counsel is absolutely necessary. Since 1959, the Firm has developed reliable relationships with Foreign Associates in virtually every country of the world, a vital asset that has been vetted through research, in-person meetings at global IP conferences, and experience in countless International IP matters handled with each local firm.
To learn more about how the Firm can assist with International IP, please email or telephone. We look forward to the opportunity to be of service.