Protecting Your Intellectual Property in The European Union
Several general principles are important for effective protection of intellectual property (IP) rights in the European Union. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in the European Union than in the United States. Third, rights must be registered and enforced in the European Union 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 local levels.
Most copyrighted works created in the United States will be automatically protected in the European Union 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 is based on a first-to-file system: the first person or entity to register the patent becomes the title holder. Similarly, most trademark and design rights -similar to a design patent- are based on a first-to-file registration system. So, you should consider how to obtain patent, design, or trademark protection before introducing your products or services into the EU market. Better yet, you should consider having an IP strategy for the whole world even before making your intellectual property public in any country, to ensure that you do not lose the right outside the United States.
Trademark and design titles can be obtained for the whole of the European Union at the European Union Intellectual Property Office. Individual titles for Member States can also be obtained at the corresponding IP office. Similarly, a bundle of patent titles can be obtained for various countries through a simplified process at the European Patent Office; an individual patent title can be directly obtained from the patent office of the Member State. There are also other international registration systems like the Patent Cooperation Treaty for patents or the Madrid Protocol for trademarks, that could be useful to facilitate the protection of your IP in many countries of the world, including Member States.
It is vital that companies understand that intellectual property rights are primarily private rights and that the United States government cannot enforce them for private individuals in the European Union. 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 legal counsel or IP consultants who are experts in a given Member State and 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 European Union require constant attention. Work with legal counsel familiar with EU 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 European Union and the United States, including Local American Chambers of Commerce.
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, both EU and U.S.-based. These include:
- The U.S. Chamber and local American Chambers of Commerce
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- The Coalition Against Counterfeiting and Piracy
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
A wealth of information on protecting IP is freely available to United States 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” at 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 or obtaining designs or utility patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USTPO) 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 STOP Fakes website. For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits, consult the STOP Fakes IPR Toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and also contain contact information for IP offices abroad and government officials available to assist SMEs. For more information, please see the webpage on Protecting Intellectual Property.
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 2021 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, including an attaché at the U.S. Mission to the European Union whose office covers the European Union and its Member States. For additional information on Member States’ protection of property rights, please consult the Department of Commerce’s Country Commercial Guides for individual Member States.
To access Portugal’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.