Intellectual Property IP

For imports and exporters, intellectual property rights are a critical and challenging aspect of doing business internationally. There are several terms relating to intellectual property that traders should be aware of.

In this post we will discuss the terms regarding to patents and trademarks.

It is crucial to have a working knowledge of these terms, but keep in mind that this is not a huge list of every term you need to know when working with intellectual property.

1. Intellectual Property

Intellectual property (IP) includes a broad collection of rights relating to works of authorship, inventions, designs, trademarks and trade secrets. Intellectual property rights can be protected in individual countries under copyright law, patent law and trademark law.

It is important to note that rights are held per country, so that does not mean you would have protected rights in every country you ship to.

2. Infringement and Enforcement

Trademark infringement can be intentional, such as the act of passing off, pirating or counterfeiting goods or marks, but also includes unintentional use of a confusingly similar mark in a way that creates confusion among consumers as to the source or sponsorship of the goods or services.

Enforcement involves the policing, watching and monitoring of your intellectual property in order to protect it from or fight back against infringement. This is done individually and through the courts.

3. Priority Date

A priority date, as it applies to an invention, is typically the first date that you put a patent application on file, whether it’s a non-provisional patent application or a provisional patent application. Priority for trademarks is generally the date you file an application, or the date on which you begin using the mark, depending on the country.

5. Trademark

A trademark "is a word, symbol, name, slogan or combination that identifies and distinguishes the source or goods and may serve as an index of quality."

Service marks perform the same function for businesses dealing in services rather than goods.

In many other countries, trademark rights are obtained through registration, although some countries provide protection for marks based on use or for internationally famous marks.

6. Trademark Infringement and Enforcement

Trademark and trade name infringement is defined using the following terms:

Counterfeit

A “spurious (false, non-genuine) trademark, which is identical to, or substantially indistinguishable from a registered trademark.

Confusingly Similar

The legal standard for determining infringement where the mark is not counterfeit is "confusingly similar." The test for likelihood of confusion is whether the mark is likely to cause confusion or mistake or to deceive the average consumer.

The standard is similar in most other countries.

Gray Market (Parallel Imports)

Gray market goods are genuine goods bearing a trademark and imported into a market and sold there without the consent of the trademark owner.

Trademark enforcement is typically adjudicated through the courts.

7. Trademark Registration

Trademark registration is not mandatory. However, it has several advantages, including public notice of the registrant's claim of ownership of the mark, a legal presumption of ownership, nationwide rights, and the exclusive right to use the mark on or in connection with the goods and/or services listed in the registration.

Registration of a trademark in one coyntry does not confer trademark rights in any other country.

8. Patent

A patent is the grant of a property right to the inventor.

Generally, the term of a patent is 20 years from the earliest date that the application for patent was filed, subject to the payment of maintenance fees and annuity fees in foreign jurisdictions.

There are three types of patents: utility patents, design patents and plant patents.

9. Patent Infringement and Enforcement

Patent Infringement

For devices, if someone infringes the claims of a patent, it’s because they are making, using or selling a device that includes each and every limitation of a claim in a patent.

Patent Enforcement

It’s important to remember that a patent owner typically enforces his or her rights through the courts.

Enforcement in foreign countries is different in each country, but it’s typically done through a court. Alternatively, sometime a patentee is aware of the infringement, contacts the alleged infringer and the parties settle outside of court.

10. Patent Application

There are two types of patent applications: provisional patent applications and non-provisional patent applications.

• Provisional patent applications are never examined. Typically, they are put on file as a placeholder to secure a priority date. Applicants may file a provisional application when a device isn’t fully developed or when it’s fully developed, but the applicant wants to protect the earliest priority date they can.

• Non-provisional patent applications are examined, and they include international applications filed under the Patent Cooperation Treaty. Non-provisional patent applications have different requirements—the chief requirement being an inclusion of claims because the patent application is actually being examined.

The patent process can be lengthy and expensive. Please be aware on the information above and plan your business activities accordingly.