Do I need to file for protection overseas?

If you plan on selling, distributing or sourcing your products abroad, you should consider registering or applying for protection with each country's intellectual property (IP) authorities. Information on filing for patents and contact information for authorities around the world can be found at the World Intellectual Property Organization web site.

If a business is interested in seeking patent protection in many countries, it may be beneficial to consider the Patent Cooperation Treaty (PCT), an international filing mechanism that permits an applicant to file a single patent application that can be transmitted to some or all of the 144 different member countries (as of June 2011).  The right holder must simply request examination in each individual country under the PCT in order to be evaluated for a patent in that country (with limited exceptions).

Also, if a business is interested in seeking trademark protection in a number of countries, it may be beneficial to consider filing an application under the Madrid Protocol, which offers one-stop-shopping for seeking trademark protection in one or more countries that are signatories to the Protocol. In addition, the U.S. Government has worked with U.S. embassies around the world to develop "IPR toolkits," which provide a wealth of detailed information on how to protect and enforce your IP rights in those specific markets. IPR toolkits for additional countries are posted periodically.

Filing for protection may not be appropriate for every business. The circumstances for determining what type of IP protection is best for your business may be complicated and differ for each individual business. Furthermore, international protection can be costly. Some issues to consider when making this decision are:

  • Will I be conducting business outside the U.S.?
  • Do I think I will ever export my product overseas?
  • Do I think I will ever manufacture my product overseas?
  • Can I afford international IP protection? If so, in what markets would my product most likely be commercially sold?
  • What forms of IP are available to me?
  • What is the likelihood of my product being copied abroad?

It is important for businesses to keep in mind that certain actions may bar certain types of protection, so the earlier a business considers IP protection, the better. Patents generally must be secured prior to entering a market or the patent seeker can lose the option of getting a patent.