Ten Tips on IP Best Practices - Tip 9

April 17, 2014

Top Ten Tips on Intellectual Property Best Practices for Small Businesses

Everyone knows high tech businesses derive most of their value from intellectual property.  However, in our digitized world of information overload, few businesses really know how to “separate the wheat from the chaff.”  The reality is every business can build and sustain a competitive advantage by properly leveraging its intellectual property.  Your legal counsel can add tremendous value to your organization by ensuring proper identification and legal protection for these valuable but intangible assets.  The following is our monthly Top Ten Tip on IP Best Practices for Small Businesses.

Tip #9.  Remember International Markets.  If you conduct business outside the U.S. you should take steps to protect your IP in those foreign markets.  The IP laws of other countries are different than U.S. law.  The U.S. has entered into many treaties with other countries which extend protection to IP used in those countries.  However, most of these treaties will only allow filing in the foreign market within a certain time period after a U.S. registration.  For example, U.S. federal trademark registration is not valid outside the U.S. but, certain countries recognize a U.S. registration as a basis for filing an application to register a mark in those countries under international treaties.

There is no such thing as an “international copyright” that automatically protects an author’s or artist’s work throughout the world.  Protection against unauthorized use in a particular country depends on the laws of that country.  However, most countries offer protection of foreign works under certain conditions that have been greatly simplified by international copyright treaties and conventions.  There are several such treaties and conventions affecting copyright, including the Berne Convention for the Protection of Literary and Artistic Works; the Universal Copyright Convention; and the World Intellectual Property Organization Copyright Treaty.  An author or artist who wants copyright protection for their work in a particular country should first determine the extent of the 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.  If the country in which protection is sought is a party to one of the international copyright conventions, the work generally can be protected by complying with the conditions of that convention.  Even if the work cannot be brought under an international convention, protection under the specific provisions of the country’s national laws may still be possible.  There are, however, some countries that offer little or no copyright protection to any foreign works.

Patents follow the same basic international legal principals as trademarks and copyrights.  Some may be protected by treaty or convention and filing in the foreign county; some countries offer little or no protection at all.  There are filing deadlines based upon first registration, public disclosure or sale of the invention.

For current information on the requirements of IP protection provided by foreign countries, it is strongly recommended to consult an IP attorney familiar with foreign IP laws.

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