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Generally, the legal regimes establishing ownership and control of intellectual property are applied on a territorial basis — that is, they are created by, and apply only to, the country of origin. Accordingly, in order to protect your intellectual property in countries outside the United States, you must establish such protection in each country. You might think that this would require an examination of each country’s laws to determine the existence and scope of protection in that country. Fortunately, many countries adhere to established international conventions and treaties, which are described below. Many of these conventions and treaties are administered through the offices of the World Intellectual Property Organization in Geneva, Switzerland (www.wipo.org).
Most of the major industrialized countries belong to the Berne Convention, which is a series of six multi-national treaties concerning the copyright protection of literary and artistic works. The basic principles and minimum standards of the Berne Convention are as follows:
o Works created or protected in a member country must be given the same protection in all other member countries as that country grants its own nationals;
- Copyright protection must be available without satisfying any formalities (such as notice or registration);
- The minimum term of copyright protection shall be the life of the author plus 50 years; and
- Protection includes "…every production in the literary, scientific, and artistic domain, whatever may be the mode or form of its expression." (Berne Convention 1886, Art. 2(1)).
The other major copyright convention is the Universal Copyright Convention ("U.C.C."). The U.C.C. provides for "national treatment," meaning that the protection received by a citizen of a U.C.C. signatory in another U.C.C. signatory country must be the same as such U.C.C. signatory country affords its own nationals. U.C.C. protection is not as extensive as Berne Convention protection.
In addition to the Berne and U.C.C. Conventions, international copyright protection can be affected by the Buenos Aires Convention, as well as numerous bilateral treaties.
The Madrid Protocol covers trademark matters, and facilitates registration of trademarks in member countries by allowing proof of registration in the home country to be deposited in a Central Registration Bureau. The United States is not a party to the Madrid Protocol, but U.S. companies can use it if they have a sufficient industrial or commercial presence in a member country. Under the Madrid Protocol, trademarks remain valid for ten years after they have been registered.
The European Community Trademark (ECT) Office began accepting applications for Community Trademark registrations on January 1, 1996 by using ECT applications. For the first time, United States trademark owners are able to obtain a single trademark registration covering virtually all of Europe at a cost much lower than individually filing in each country. The initial registration lasts ten years from the filing of the application.
Many countries, including the United States, are a party to the Patent Cooperation Treaty ("PCT"), which allows applicants to file an "International Application" at one’s home country patent office under the auspices of the World Intellectual Property Organization. Although an international PCT application is treated as the effective filing of separate patent applications in each PCT Member Country designated in the Application, it does not mature into an "International Patent." The filing party must take additional steps within a 20 to 30 month period (depending on the country) to enter the "National or Regional Stage" and complete the applications at each of the designated offices.
One of the more problematic decisions to make in filing for international patent protection is choosing in which countries to file for protection. Although the expense of filing the PCT and designating a list of countries for eventual filing at the National or Regional Stage is comparable to U.S. filing fees, the actual entry of the International Application into the National or Regional Stage for multiple countries or regions can be costly. The decision on countries or regions for foreign filing should be based on your business plan, i.e., where do you expect to sell or license your technology. As part of your decision-making you should also consider your exit strategy, since you should avoid diminishing the international value of your technology if your exit is dependent on it. Another consideration is the expense or ease of enforcing your patents against infringers in those countries. Besides individual countries, International Applications can be designated for regions such as the 20 countries of the European Patent Convention, for which a single patent can be sought under the auspices of the European Patent Office (www.european-patent-office.org).
The PCT Procedure includes the preparation of an International Search Report, which is available for review before decision is made whether to enter the National Stage. The PCT Application and the International Search Report are published 18 months from the priority date (if claimed) or the international filing date (if no priority is claimed). Published PCT Applications are widely read by competitors and practitioners in the technology areas because it provides an insight into patent filings that may be pending in the United States.
International Treaties Broadly Covering Intellectual Property
The General Agreement on Tariffs and Trade negotiation ("GATT") contains several significant intellectual property-related provisions, including the related Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade and Counterfeit Goods ("TRIPS"). Under TRIPS, the signatory countries must at a minimum comply with the requirements of the Berne Convention, such as national treatment and prohibition of any formalities or conditions. Importantly, TRIPS explicitly requires that computer programs, whether in source or object code form, shall be protected as literary works under the Berne Convention. The TRIPS Agreement also requires all GATT members to provide at least a baseline level of protection and enforcement for patents, trademarks, copyrights, trade secrets, mark works, industrial designs, and geographic locations.
The Paris Convention for the Protection of Industrial Property provides for national treatment of foreign trademark and patent holders, and provides for a one-year grace period within which parties filing applications in a member country can file applications in other member countries.
The European Union ("EU") approved the EU Software Directive on May 14, 1991 (each member country was required to conform their national laws by January 1, 1993). The EU Software directive establishes basic requirements for the copyright protection of computer programs, including the express protection of computer programs as literary works. Other EU Directives cover protection of databases and individual privacy.
This article was published in the January 2002 issue of the Triangle TechJournal.