US Patent International Protection: All You Need to Know
US patent international protection can be acquired through the Madrid System administered by the World Intellectual Property Organization (WIPO).3 min read
2. The Madrid System
3. The Madrid System Isn't Independent
US patent international protection can be acquired through the Madrid System administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
International Patent Protection Overview
Generally, the rights to a trademark are legally recognized only within the country of the trademark's registration. Therefore, entities should consider acquiring patent protection in foreign countries in addition to doing so in the United States. You can provide a wider commercial reach for your invention by filing applications in selected countries internationally.
The patent protection acquired in the United States can only protect the intellectual property for which it was obtained within the confines of the country. That means your intellectual property is legally free for all to use as they please outside the jurisdiction of the United States. The only way to stop that is by applying for an international patent protection.
Entities who apply for a U.S. design patent are recommended to also apply for an equivalent foreign patent within six months of their U.S. design patent application. However, the appropriate international protection for your intellectual property will depend on your business model.
The Madrid System
Businesses operating abroad can take advantage of the “Madrid System,” which is a system that allows the concurrent registration of trademarks in several member countries, using only one standard application. The U.S. signed the Madrid Protocol treaty in 2003, which permits U.S. trademark holders to extend the rights of their trademarks worldwide to more than 80 countries by simply sending the appropriate application to the U.S. Patent and Trademark Office (USPTO).
Two treaties make up the Madrid System. They're the following:
- The “Madrid Agreement,” which is the agreement on the international registration of marks
- The “Madrid Protocol,” which is the international registration of trademarks
Both were administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The Madrid System offers an opportunity to U.S. franchisors that hold international trademark investments to simplify and substantially decrease the expense of acquiring and managing international trademarks. Therefore, for United States trademark owners who need foreign trademark protection, the Madrid System removes the problem of filing different applications in various countries.
For instance, the Madrid System makes it possible for a U.S. business that needs trademark protection in Japan, China, the United Kingdom, and Morocco (which are all members of the Madrid Protocol) to file a single, standardized application in the USPTO, pay no more than a single fee, and get one registration that grants trademark protection in all the aforementioned countries. The registration will result in only one registration number and one renewal date.
The Madrid System Isn't Independent
However, the Madrid System isn't a separately and independently existing trademark law, and applications filed under it don't lead to a “Madrid Registration.” That means, while registrations made under the Madrid System are usually called “international registrations,” they're different from registrations made with the support of international bodies such as the European Union. That's because they're not independent, multinational registrations.
Instead, they are the result of the Madrid System's provision of a centralized procedure to acquire several, unconnected national registrations based on an existing registration or a pending application in the trademark office of the applicant's home country. For the record, only a person who's a qualified owner of either an existing registration or a pending application in his or her home country's patent office can file an application under the Madrid System.
Although the Madrid System significantly simplified the procedure of internationally protecting U.S. trademarks and patents, it didn't produce the imaginary universal trademark as many incorrectly believe.
There are other alternatives, such as international intellectual property rights (IPR). Some examples of IPRs are listed below:
- Paris Convention for the Protection of Industrial Property 1883
- World Trade Organization (WTO) 1994
- Berne Convention for the Protection of Literary and Artistic Works 1886
- Patent Cooperation Treaty (PCT) 1970
None of the aforementioned conventions creates an international kind of IPR. PCT, for instance, tries to decrease needless difficulty and cost for patent applicants. The moment an international patent application is submitted at the patent office of a member country, it automatically takes care of filing for a patent in every other member country in which the applicant is interested. The home patent office sends the international patent application to all the member countries the applicant chooses. Then, the home patent office of each member country proceeds with the application process, adhering to its local laws.
If you need help with U.S. patent international protection, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Menlo Ventures, and Airbnb.