Do I need to file for protection overseas?

If you plan on selling, distributing, manufacturing, or sourcing your products abroad, you should consider registering or filing your patents and trademarks with each country's intellectual property (IP) authority.  Many countries extend copyright protection automatically to creative works but there may also be advantages to registering your copyright in certain markets.  Finally, there is no registration process for protecting your trade secrets. Information on filing for patents and contact information for authorities around the world can be found at the World Intellectual Property Organization website.  In addition, the U.S. Department of Commerce has worked with the U.S. embassies in a number of countries 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.

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 146 different member countries (as of Feb. 2013).  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 of the 88 countries that are signatories to the Protocol (as of Feb. 2013). 

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.