In our last article, we wrote about “firsts” in relation to patents, trademarks, and copyrights. That essay was limited to U.S. laws and regulations. As you can imagine, laws and regulations across the globe are different. In other countries, being “first” is much more important than it is in the United States.
PATENTS
Since 2013, the “first to file” a United States patent application has the presumptive right to the granted U.S. patent. Before 2013, the right to a patent in the United States was awarded to the “first to invent” rather than considering who was the first to file for a patent.
There were many reasons for changing this rule, one being harmonizing U.S. law with the patent laws in other countries. Globally, the current system grants patent rights to the first person or legal entity that files for a patent.
This arguably gives an advantage to corporations which have the wherewithal to file in multiple countries. However, small companies whose financial resources may not be at the same level can take advantage of treaties such as the Paris Convention and the Patent Cooperation Treaty (PCT). The filing date of the U.S. application can provide a priority filing date, when filing in a foreign patent office within one year of the U.S. filing (using the Paris Convention). Proceedings (and costs) can be delayed another 18 months by making a PCT filing. By using these treaties, the original U.S. filing date serves as a filing date in most other countries.
Furthermore, the costs can be consolidated by filing through regional organizations, such as the European Patent Office (38 countries), the Eurasian Patent Office (eight countries), and several other similar regional treaties. Such regional treaties eliminate the need to file in individual countries, thus reducing costs.
TRADEMARKS
In the opinion of many, trademarks in other countries are just as important as securing patent protection. The first brand to market with a new product establishes goodwill and name recognition (i.e., a trademark). The United States arguably has the largest and most lucrative marketplace in the world. Buyers in other countries associate brands developed in the United States with specific products.
Unlike patent protection which has filing time restrictions, trademark protection is always available as long as someone else has not beaten the trademark owner to that country’s trademark office. Again, being first to file is important!
Unlike the United States, in most other countries use of a trademark in that country is not needed to obtain a registration for that mark. This opens the door for enterprising individuals or companies to register a trademark that is being used in the United States. A counterfeit product can then be sold in that country by that enterprising individual or company, and the counterfeiter owning that registration can then prohibit the U.S. trademark owner from selling its branded product in that country.
U.S. companies should also be concerned about filing first when establishing a relationship with a distributor in that country. On occasion, the distributor may volunteer to register the trademark under the guise that it is doing this for the benefit of the U.S. company. If the relationship goes south, the distributor then has leverage since it owns the trademark registration. The distributor can demand a royalty on the use of the trademark in that country, stop a different new distributor from importing goods there, or require an exorbitant amount of money to sell the registration back to the U.S. company.
COPYRIGHTS
Globally, copyright law is pretty much the same. The Berne Convention is one of the oldest intellectual property law treaties (1886) and established international standards for the protection of authors’ rights. The United States was not an original signatory, but finally ratified the Berne convention in 1989. This was largely because U.S. copyright law at the time emphasized formalities (such as registration and notice requirements) which were inconsistent with the Berne Convention’s principle of automatic copyright protection upon creation.
In IP filings, being first to file is critical to success.
The post Being Second = Being Last! appeared first on Attorney at Law Magazine.
