12.11.07

How Can I Protect My Intellectual Property? - Part 1 Registering Products

Posted in Intellectual Property at 11:54 pm by Administrator

When I first came out of university and started working for the Office of the Special Trade Representative (USTR), intellectual property was a fairly mundane issue. There was one person working on it at USTR and mostly we relied on the US Patent Office attorneys for advice. It was a given that patent protection in the developing world was a lost cause and there were only technical disputes with Europe and Japan. The Tokyo round made some small improvements but it was only with the GATT becoming the World Trade Organization that a framework was established (the so-called TRIPS agreement).

Where are we now? Patent protection is required among the WTO signatories and local laws should conform to TRIPS. The signatory countries also have to provide for enforcement mechanisms (for information on TRIPS see: http://www.wto.org/english/tratop_e/trips_e/trips_e.htm

As is frequently the case, theory and application often diverge widely. Most any company will need an intellectual property strategy as part of its international marketing program. It’s not only patents, but also copyrights, trademarks and trade secrets that need to be protected. This will be the first of a several part analysis of strategies.

Let’s focus today on patents. The first step is getting the patent registered in the country of origin. In the US context, that means the US Patent and Trademark Office (www.uspto.gov). While some experienced inventors register themselves, most companies use an attorney specialized in the field. For those of you living in California, you have one publicly funded free resource, the Sawyer Center in Santa Rosa (www.santarosa.edu/sbdc). The coordinator of the center, Steve Schneider (sschneider(at)santarosa.edu) is an invaluable resource to inventors through the San Francisco Bay Area.

Once you have made the initial registration, you can apply for patents in other countries. Having a US patent does noe automatically mean it will be covered elsewhere. There is an advantage of waiting until the patent is issued because after that most countries will allow you to extend the US patent internationally in the first year. (There are always exceptions - for example the US permits genetic blueprint patents for organisms while many countries do not).

Do I need to register my product all over the world. A common strategy is to secure patent protection only in the countries in which you are selling or manufacturing. There is the loophole that someone could begin manufacturing in the unprotected country. That’s a risk you have to judge - how important is the market in the future, could the pirated material be shipped to third countries? It is precisely because of these uncertainties, you need an IP strategy in as part of the company’s overall domestic and international strategy.

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