Protecting Your Intellectual Property in a Wild World

Your company is an “A” player and it has done everything right in the U.S. in protecting its intellectual property (“IP”). You have not just relied upon a “smile.” You’ve invented a unique product called Superstar® widget and it is not yet offered by your competitors. Vast amount of resources have been poured into the development of the Superstar widget. Prior to introducing the Superstar widget, you used due diligence and used the IP Awareness Assessment Tool on the U.S. Patent and Trademark Office website to identify what IP you have, if it has value, and if it can be protected under U.S. law.

Upon identifying your IP, the company retained capable attorneys who were successful in obtaining U.S. trademark registrations on the corporate name, non-functional design, and logo so customers could more easily identify the Superstar widget and its association with the company. Superstar widget packaging correctly evidences all registered trademarks.

You made a wise expenditure on patents and the company has received patents on the Superstar widget process. Further, copyright registrations with the U.S. Copyright Office have been obtained on your website, web video, and associated software and you are giving notice to the world of your ownership by using the appropriate symbol of “©2012 Company.”

Last, but not least, the company has developed significant non-public information that would be valuable to a competitor with respect to its manufacturing processes, research data, and operations information, and trade secret self-help best practices are being used to protect the non-public information. In its 2013 Commission Report, the Commission on the Theft of American Intellectual Property found that most IP losses are committed within United States borders (p. 31).

Your self-help practices include:

• Limiting distribution; marking “confidential” on all proprietary and trade secret documents;
• Securing facilities and files;
• Physically isolating all trade secrets and confidential information by keeping them off the company’s network to prevent cyber theft; using confidentiality contracts with employees and third parties; and
• Creating and complying with rigorous secrecy procedures; and conducting ongoing training.

You are also marking confidential electronic files through techniques such as “meta-tagging,” “beaconing,” or “watermarking” so you know if protected information has left your authorized network and you can potentially identify the location of files in the event they are stolen.

Congratulations! The company is a winner in that it has used the entire gamut of U.S. IP law to protect its Superstar widget: trademarks, copyrights, patents, and trade secrets.

Now it is time to venture into the wild world. The company has identified countries in which it would like to export Superstar widgets to and it is considering both direct and indirect exporting methods. You have continued to do due diligence and have been up many nights searching the web and your worries are mounting regarding protection of the company’s IP:

• Counterfeiting: Company trademarks will be placed on competitive goods;
• Piracy: Content on website, web video and associated software will be used to sell competitor goods; and/or
• Theft: Patents will be utilized to sell competitive goods.

What you should know about protecting your IP abroad:

1. General – Start Immediately. U.S. IP laws confer little to no protection overseas. Federal protections extend only throughout the U.S., its territories and possessions. In order to get protection for your IP in a foreign country, you have to apply for protection under the laws of that country. The company needs to seek trademark/patent/copyright protection in large potential markets well in advance of actually exporting the goods. The best defensive strategy is to obtain a foreign country-specific trademark/patent/copyright registration. Such registrations aid in enforcement and prevent others from filing.

2. Trademark Law. In its Global Impact Study “Estimating the Global Economic and Social Impacts of Counterfeiting and Piracy” (released in 2011), the International Chamber of Commerce estimates that the total global economic value of counterfeit and pirated goods is as much as $650 billion per year. Most countries recognize trademark rights arising from filing whereas the U.S., the United Kingdom, Australia, and Canada recognize rights arising from use.Conduct a search in each country to determine if your trademarks are available for registration. For example, some companies report a two-year backlog and squatting (registering someone else’s product for purposes of selling the trademark back) in China. Resources to protect innovations and market products safely at home and abroad are found at STOPfakes.gov.

   The Madrid Protocol, an international treaty between 88 countries and administered by the World Intellectual Property Organization, makes it easier to file for trademark registrations in multiple chosen countries at the same time. By filing one trademark registration application with the U.S. Patent and Trademark Office, U.S. applicants can seek protection in up to 84 countries.

3. Patent law. Contact the country’s intellectual property office. Use the International Patent Legal Administration to take advantage of the Patent Cooperation Treaty (“PCT”) which streamlines the process to file patents in multiple countries.

4. Copyrights. Copyrights must also be filed in each country where protection is sought. There is some protection under international treaties or other international agreements with respect to copyrights. Under the Berne Convention, copyrights in all Berne and World Trade Organization countries receive automatic protection without any formality (such as registration, copyright notice, etc.) that is extended on a basis of national treatment. For example, a U.S. author suing in France under French copyright law is entitled to the same protection as a French authors suing in France under French copyright law. Berne Convention members can be found on the webpage for World Intellectual Property Organization Administered Treaties.

Although there is “a lot of bad” in the wild global market, it can be navigated so you can protect the underlying IP while increasing your sales internationally.

Reprinted with permission from InterBusiness Issues (iBi) magazine, published by Central Illinois Business Publishers.

Posted by Attorney Ruth A. Binger. Binger serves both emerging and mature businesses concentrating in corporate law, intellectual property and technology law, digital media law, and labor and employment law. Her commitment to the success of small to medium-sized businesses, and her understanding of multi-faceted issues inherent in operations, are what distinguish Binger’s practice.