Ask
The Small Business Professor?
Dear Professor Bruce:
I am a small business owner
and just received a U.S. patent on an invention and have
registered my trademark. If I do business overseas, is my
U.S. patent and trademark registration enough?
Answer:
In short, no. A U.S. patent
only gives you the right to keep others from making, using,
offering for sale, or selling the invention in the United
States. Likewise, a U.S. trademark registration is valid
only in the United States and restricts the use of marks,
which are confusingly similar to the registered mark.
Today, piracy, counterfeiting
and the theft of intellectual property pose a serious threat
to all U.S. businesses. Small businesses can be at a
particular disadvantage because they lack the resources and
expertise available to larger corporations and may not be
familiar with the process of protecting intellectual
property. Research conducted in the spring of 2005 by the
U.S. Patent and Trademark Office (USPTO) indicates that only
15 percent of small businesses that do business overseas
know that a U.S. patent or trademark provides protection
only in the United States.
According to Brigid Quinn,
Deputy Director of Public Affairs (USPTO), “Making patent,
trademark and copyright protection a core part of your
business plan-- whether you're a major multinational firm or
a one-person home business--is a smart business strategy”.
Since the rights granted by a
U.S. patent extend only throughout the territory of the
United States and have no effect in a foreign country, an
inventor who wishes patent protection in other countries
must apply for a patent in each of the other countries or in
regional patent offices. Almost every country has its own
patent law, and a person desiring a patent in a particular
country must make an application for patent in that country,
in accordance with the requirements of that country.
If you are a qualified owner
of a trademark application pending before the USPTO, or of a
registration issued by the USPTO, you may seek registration
in any of the countries that have joined the Madrid Protocol
by filing a single application, called an "international
application," with the he International Bureau of the World
Property Intellectual Organization, through the USPTO. Also,
certain countries recognize a United States registration as
a basis for filing an application to register a mark in
those countries under international treaties. The laws of
each country regarding registration must be consulted.
The USPTO created a Web site
to help small businesses consider the benefits of strong
intellectual property protection - both in the United States
and overseas - and decide whether it is right for them.
For further information,
visit:
http://www.uspto.gov/smallbusiness/
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