Foreign Intellectual Property Protection

ForeignIP

Overhauser Law Offices assists clients throughout the world in securing patent, trademark and copyright protection in the United States. We also help US clients get protection in foreign countries.

Foreign Patents
Foreign Trademarks
Foreign Copyrights

Foreign Patents

The rights grated by a US patent have no effect in foreign countries. Almost every country has its own patent law, so a person desiring a patent in a particular country must apply for a patent in accordance with the requirements of that country.

Patent law in most foreign countries differs from patent law in the United States. Often, a patent must be filed before any documentation about the invention is published. Like the U.S., many countries charge maintenance fees to sustain their patents, and some countries require that patented inventions be manufactured inthat country. Neglecting to fulfill any of these requirements may result in a voided patent.

The Paris Convention for the Protection of Industrial Property is an international treaty by which 168 countries in which each country guarantees foreigners the same patent rights extended to citizens of that country. It also provides for the "right of priority," meaning that a patent application filed in one country may be given the same filing date in other member countries, if the subsequent filings are within a specified time period (6 or 12 months, depending on the patent). The right of priority is important because it ensures that publications and competing patents that might invalidate the inventor's application do not count against the inventor.

The Patent Cooperation Treaty has more than 124 member nations and provides for centralized filing procedures and a standard application format. Regional patent centers now facilitate a single international filing date for each application. This international filing also affords centralized patent research for each invention and extended time periods for filing the patent in each country.

Overhauser Law Offices employs attorneys who specialize in obtaining foreign patents. To schedule a consultation, please contact us.

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Foreign Trademarks

US trademark registrations only protect you in the United States. In order to protect your trademark or logo in another country, you will need to file a trademark application in that country.

One cost effective option involves the "Madrid Protocol." This is an international treaty that streamlines the foreign filing process by allowing an applicant to file one application designating as many foreign member countries as they wish. Before the Madrid Protocol, a trademark owner had to hire local attorney in each foreign country in which protection was desired. However, using the Madrid Protocol, a single application can be filed.

To file a "Madrid Protocol" application, you must:

1. Have either a pending US application, or an issued US registration with the United States Patent and Trademark Office ('USPTO'); and

2. Be a citizen of the United States; be domiciled in the US; or have a "real and effective industrial or commercial establishment in the United States."

Madrid Protocol applications may only be filed by U.S. citizens, residents, or those with industrial or commercial establishments in the United States. Applicants must have a registered U.S. trademark or a pending U.S. trademark application. The costs for a Madrid Protocol application varies depending on the number of products and services you want to protect; the more goods and services you have and the more countries you wish to include, the higher the certification fee will be. To consult with Overhauser Law Offices about applying for international trademark protection, please contact us.

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Foreign Copyrights

There is no comprehensive international copyright law that protects created works worldwide. Copyright protection in each foreign country depends on the national laws of that country, though most The United States participates in two principle international copyright conventions which simplify, to a certain degree, the registration of foreign copyrights.

An author who wishes copyright protection for his or her work in a particular country should first determine the extent of protection available to works of foreign authors in that country. If possible, this should be done before the work is published anywhere, because protection may depend on the facts existing at the time of first publication.

The attorneys at Overhauser Law Offices are familiar with the conventions, treaties, and bilateral agreements that govern copyright protections in foreign countries. For current information of the requirements and protections provided by other countries, and for assistance with the registration and defense of such copyrights, please contact us.

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