Provides advice on IPR protection, including information on the registration of patents and trademarks.
In any foreign market companies should consider several general principles for effective management of their intellectual property (IP). Several general principles are important for effective protection of IP rights in the EU/EEA. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in the EU/EEA than in the United States. Third, rights must be registered and enforced in the EU under local laws. For example, your U.S. trademark registrations, design or utility patent titles will not protect you in the European Union without further administrative procedures in the corresponding Member State or at regional level.
Most copyrighted works created in the United States will be automatically protected in the EU/EEA from the moment of creation or publication according to international agreements. However, the extension of protection will vary according to the laws of each Member State. Protection against unauthorized use will vary depending on the national laws of each country.
Obtaining a utility patent in Member States of the EU/EEA is based on a first-to-file system: the first person or entity to register the patent becomes the title holder. Likewise, most trademark and design rights -similar to a design patent- are based on a first-to-file registration system. Therefore, you should consider how to obtain patent, design, or trademark protection before introducing your products or services into the EU/EEA market. Better yet, you should consider having an IP strategy for the whole world even before entering into foreign markets, to ensure that you do not lose the possibility to obtain IP protection outside the United States.
It is vital that companies understand that intellectual property rights are primarily private rights and that the U.S. government cannot enforce them for private individuals in the EU/EEA. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in EU law. The U.S. Commercial Service can provide a list of local lawyers upon request.
While the United States government stands ready to assist, there is little that can be done if the rights holders have not taken these fundamental steps necessary to secure and enforce their IP in a timely fashion. Moreover, in many countries rights holders who delay enforcement of their rights may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should United States government advice be regarded as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins and the incentive of would-be bad faith actors. Projects and sales in the EU/EEA require constant attention. Work with legal counsel familiar with EU/EEA law to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, in both the EU/EEA and the United States, including Local American Chambers of Commerce.
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues, including enforcement issues in the United States and other countries, contact the “STOP! Hotline”: 1-866-999-HALT or visit the STOP Fakes website maintained by the U.S. Patent and Trademark Office.
- For more information about registering trademarks, designs and patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199.
- For more information about registering copyrighted works in the United States, contact the U.S. Copyright Office at: 1-202-707-5959.
- For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website.
- For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: STOPfakes Business tools. The toolkits contain detailed information on protecting and enforcing IP in specific markets (e.g. EU toolkit) and also contain contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.
To access Kazakhstan’s ICS, which includes information on the protection and enforcement of intellectual property rights, visit the U.S. Department of State Investment Climate Statement website.
The Office of the United States Trade Representative (USTR) publishes the Special 301 Report on an annual basis. This report provides a review of IP protection and enforcement for United States trading partners around the world. In the 2022 edition of the Report, USTR highlights the negative market access implications for United States producers due to the European Union’s protection of geographical indications and third-country markets.
The U.S. Department of Commerce has positioned IP attachés in key markets around the world. Here is the contact information for European-based IP attachés:
European Union (based in Brussels, Belgium)
Tel: 011 (32) 2 811 4000
WTO - World Trade Organization (based in Geneva, Switzerland)
WIPO - World Intellectual Property Organization (based in Geneva, Switzerland)
For more information, contact ITA’s Office of Standards and Intellectual Property (OSIP) Director, Stevan Mitchell at Stevan.Mitchell@trade.gov