IP Boot Camp — Levels of Protection Part 3
It shouldn’t surprise anyone to find out that the US isn’t the only country in the world that has IP Protections. Other countries and also groups of countries like NATO, the EU and the UN have laws, treaties, and other types of agreements made to help protect intellectual property throughout the world. Unlike common law IP rights in the US, protection in some foreign countries are not automatic. In order to gain protections for intellectual property rights around the world, IP owners must in many cases apply under an international treaty, protocol, or convention.
The main forms of international protection for IP are the Berne Convention for Copyright, the Madrid Protocol for Trademarks, and the Patent Cooperation Treaty for Patents. These international agreements all provide methods for owners of IP to use or have protection for their IP in several, if not all, of the countries that are parties.
Copyright and the Berne Convention
Though there is no centralized international registration and filing system for copyrightable works, there is a way under international treaties to aid in the process of protecting copyrightable works throughout the world.
The Berne Convention for the Protection of Literary and Artistic Works is an international treaty with over 150 member countries that sets base standards for copyright protection for its “members”. Any work that originates in a Berne Member nation is afforded the copyright protection of that country as well as the the base Berne protections in all member countries, according to that country’s laws and if there are additional protections provided by member nations, full protections once the work is registered in that country. A work created and registered in the US for instance, will have full rights and protections in the US based on US Copyright law, and base Berne protections in other countries such as the UK, France, Australia, Japan, etc. Once the work is registered in those countries, the work will have the full extent of the rights and protections granted to works in those countries as well.
An important factor to note, specifically regarding Berne application: All rights are not reciprocal and if the works are not registered in both countries, only Berne protections are afforded for foreign works. For example, European countries have more extensive rights and protections for visual artists, what we would call moral rights. If a work is created and registered in the US, it is afforded certain moral rights under the Visual Artist Rights Act (VARA). VARA rights are not as extensive as their counterparts in other countries and such extended rights are not afforded to US works in, say, France. Until the work is registered in the EU or France (and even then only under certain circumstances), the work cannot gain the additional moral rights protections afforded to a domestic French work. Such additional protection will still not translate back into American Copyright law.
Trademarks and the Madrid Protocol
For Trademarks, the Madrid Protocol is the standard international registration and filing system. Administered by WIPO, the World Intellectual Property Organization, the Madrid System allows for a trademark owner to more efficiently and effectively register their mark in several nations using a single application process.
When a Trademark owner applies for trademark protection in their original nation, the USPTO for the US, they have the option of filing for international examination and approval through a regional examining office. It is a little easier for Americans because the USPTO is an international examining office as well. When a Madrid filing is sought, the owner chooses additional territories they would like protection. Once the mark passes through the international registration process, WIPO sends the Madrid application to the local registration authorities and as long as there are no issues (like confusion with a locally registered mark or a violation of local law), registration of the mark will issue in the additional territories within 18 months. The Madrid process can ease the stress and cost of applying in individual nations or regions for trademark protection. Another significant benefit of the Madrid system is that through WIPO, the Madrid system offers international search, monitoring, and management systems to help track and enforce your international trademarks.
Patents and the Patent Cooperation Treaty
Inventors in countries across the world that are members of the Patent Cooperation Treaty have a dramatically more streamlined and cost effective method for international Protection. The PCT now allows for an inventor to file a single international patent application that would be the basis for registration in all member countries simultaneously, rather than filing multiple national or regional applications.
The PCT application is initiated in the inventor’s home patent office, USPTO for the US, and depending on the home office, is examined by an additional international searching authority, where the application is scrutinized and a report made, which is given to WIPO to publish. Here again, it is a little easier for Americans because the USPTO is an international searching authority. After the publication period, if no objections arise and the patent is allowed to continue, the application is sent to the national offices of the countries, where applications are evaluated as they would be for domestic applications.
In addition to certain benefits of an application under the PCT, such as the right not to be rejected on formal grounds in a member nation as long as the PCT filing is completed correctly, the benefit of an international search report, which examines and compares your application to patent applications and registrations throughout the world and gives the applicant a formal report and opinion before national filings are made, the PCT grants possible international patent owners two great savings: time and cost. PCT filings are completed at one time and are done in one language which can help simplify the preparation and processing time for protection in foreign nations. The PCT filings also only require one set of filing fees (totaling around $3400), rather than application fees for each country you may want protection for. While there may be other fees for particular nations (if necessary, such as translation, local prosecution, etc.) these are often lower for international filers under the PCT.
These three systems constitute the major avenues for international IP protection. In addition to broader reaching treaties and agreements (UN Treaty, NAFTA, ) that may touch briefly on IP, there are several other treaties, accords and other agreements in place to address international IP protections, though most of these offer less or more compartmentalized protections than the three discussed here:
Paris Convention for the Protection of Industrial Property
Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations
Beijing Treaty on Audiovisual Performances
WIPO Copyright Treaty
Patent law treaty (WIPO)
Trademark Law Treaty (WIPO)
Singapore Treaty on the Law of Trademarks
Nairobi Treaty on the Protection of the Olympic Symbol
