Staas & Halsey LLP: Global Products Need More Than USPTO Protection

Patents issued by the USPTO only protect you from infringement in U.S. territories. If your product is global, you need an international patent approach. Continue reading to find out the steps you need to take.

When you come up with an original concept or invention, you definitely want to protect it from being used by others without your permission. Issues involving patent and/or trademark infringement are unfortunately quite common, especially since many people are eager to claim that they’ve come up with the latest and greatest product. But have you considered the legal ramifications of your goods and/or products being sold outside of the U.S.? Having your business span across the globe means you will need to have additional protections in place.

The United States Patent and Trademark Office (USPTO) only provides legal protections within United States territories. When business owners have inventions they want to protect, they typically turn to the USPTO. However, a simple perusal of the Internet clearly indicates that we live in a global marketplace with companies having a worldwide existence in commerce and/or manufacturing. That said, it is crucial for entrepreneurs to understand the geographical limits of patent/trademark protection.

So, what if your product is exposed to potential infringement outside of the U.S.? To protect your intellectual property, individuals and business owners must apply and secure patent and trademark protection in each country or foreign jurisdiction where there is a risk of violations occurring. It is important to note that most countries have their own patent and trademark process that U.S. inventors will need to undertake. While working with foreign agencies may seem intimidating (particularly for smaller businesses), it is important for business owners to proceed through the process and seek legal guidance from a knowledgeable patent and trademark professional.

It is crucial for business owners and individuals to have a strategy in place for protecting their inventions in foreign markets, as planning in advance will save time and money in the long run. For example, part of an effective strategy would be to ensure you have appropriate language in place in all licensing agreements and subcontracting contracts. Looking for a global partner? You might also investigate your ability to have foreign business partners who can help boost your product’s presence overseas. Conducting a proper due diligence check can uncover existing businesses who may be a good fit with you and your goals.

You are also encouraged to work with U.S. Customs and Border Protection to record your copyrights and U.S.-registered trademarks in conjunction with securing and registering in the appropriate foreign locations. Also, depending on the type of product you have, you should think about proactively working to protect it from piracy and counterfeiting issues, especially in places where those acts typically occur.

There are protections available to prevent infringing products from entering the United States. Once it is noted that a product with a USPTO patent is being produced domestically, the United States International Trade Commission (USITC) can prevent infringing products from being imported. And if you do find that your patent and/or trademark has been infringed upon outside of the U.S., you must make a claim overseas.

Patent owners are urged to consider their current and potential international market exposure when deciding how to appropriately protect their intellectual property.