U.S.Patent - Applying For One Outside The

In this article we're going to discuss what's involved with filing for a patent outside of the United States of America.

There are a number of factors a company or inventor has to consider before filing for a patent outside of the United States. The first thing a company must know is that most foreign filed applications will be published eighteen months after their priority date. So if a company files an application outside the United States it will eventually forfeit any trade secret protection for the invention, software or method stated in that application. However, if the company files for a patent only in the United States it can maintain secrecy until the actual patent is issued.

The next factor a company needs to consider is in what countries patent protection would be worth the trouble. In other words, you don't want to apply for a patent in a country where they don't have the technology or infrastructure to use your method or invention. For example, in countries where there is no Internet access it would be a waste of time and money to apply for a patent for some form of online sales method.

After you decide that you want to apply for a patent outside the United States, there are a number of filing options available. One option is to file for the patent directly at the patent office in the country which you want to get the patent for. A company should only use this option if it knows exactly what country or countries it wants the patent for and knows for certain that it isn't going to file for a patent in any additional countries. The company also has to be prepared to spend the filing costs necessary, which can be quite expensive for overseas patents. The lower end countries are around $4,000 for filing for a patent. In the higher end countries, like Japan because it is considered a world market leader, the costs can be as much as $12,000 for one patent.

Another option for filing for a foreign patent is to file for one with the European Patent Office (EPO). Filing directly with the EPO allows the company to file one application and to designate as many as 18 countries for the patent to be filed with. The EPO conducts an investigation of the application and then if it finds that everything is in order, grants the patent.

A third option is to file for a patent under the Patent Cooperation Treaty (PCT). The advantages of doing this are that in doing so you get to delay your decision on which countries to file your patent with. This also defers any payment of fees. A country should do this only if it is unsure of what countries it wants to file with and needs time to do some studies on the benefits of filing with each country it is considering. This method preserves patent rights without any commitment.

A company has a number of options for filing for a patent outside the United States. It should therefore conduct proper research into potential markets before choosing which option to take.

Michael Russell
Your Independent guide to Patents

FAQs Trademarks

It?s very upsetting to find someone using your business name, or one that is ?confusingly similar.? Taking advantage of Trademark law can help prevent problems and protect your rights.

Question: What does Trademark law protect?

Trademark protection may be available for any word, phrase, name, symbol, sound (called ?the mark?) that identifies or distinguishes your product or service from those made or sold by others. It includes the exclusive right to use the mark in connection with the goods and/or services listed in the registration.

Question: When can I use the ? SM or ? ?

Proper usage is important! TM applies to products; SM applies to services. You can use TM or SM without registration. ? stands for registered and can only be used when a trademark has been approved (registered) by the United States Patent and Trademark Office.

A trademark should be used as an adjective (not a noun or verb).

For example:

Correct: Rollerblade? inline skates Incorrect: ?rollerblades?

Correct: Make copies on the XEROX? copier. Incorrect: XEROX this report.

Question: How can I find out if my name (or mark) is eligible for trademark protection?

To see if anyone else is claiming the name or similar name, you can search online (e.g., www. google.com) and you will want to confirm the availability of the Internet domain name. You can also search on the Website of the United States Patent and Trademark Office (www.uspto.gov). These searches do not guarantee that the name is not in use, but they are a good indication of U.S. availability. More sophisticated international searches are needed if you plan to do business outside the U.S.

Question: Do I have to register my mark?

Registration is not required. Common law rights attach as a result of using the mark.

Question: What are the benefits of Trademark Registration?

You can register a mark in your state, nationwide, and internationally. If you register your name/mark, it will show up in search reports and hence others will be on notice of your claim. You also get a legal presumption of ownership and the exclusive right to use the mark when a mark is registered. Registration also helps in enforcing your rights against an infringement.

Question: How do I register my Trademark?

To register a work, go to the Website for the United States Patent and Trademark Office (www.uspto.gov) and click on Trademarks. You?ll find a wealth of information with forms and filing instructions.

Question: How do I stop someone from using my name?

The first step is to investigate whether the other party has registered their name/mark. If your mark is not registered, you should consider registering it. If you think you have superior rights to the name/mark, you will want to notify the other party and make them aware that their name is confusingly similar to yours. Best case, the person will stop using the name/mark. Sometimes an agreement can be worked out for concurrent usage with geographic or other restrictions. Litigation is a last resort, since it is expensive and time consuming.

Question: When can I use someone else?s Trademark?

It is lawful to use someone else?s mark in certain instances ? called ?descriptive fair use? and ?nominative fair use.? For example, it is OK to use a famous mark in comparative advertising, for news reporting and non-commercial uses. It is not OK to use a mark in a way that implies endorsement, sponsorship or appears to be ?passing off? your goods or services as those of the well-known trademark owner.

Making fun of or criticizing a famous mark is OK under certain circumstances ? such as http://www.atkinsdietsucks.com/. To avoid problems, you may want to consult with a knowledgeable attorney before using someone else?s trademark.

In conclusion, it?s a good business practice to think strategically about your name and brand and to be proactive in checking out the availability of the name and protecting your rights.

Jean Sifleet is a practical and experienced business attorney whose career spans many years in large multi-national corporations and includes three successful entrepreneurial ventures. Jean has extensive experience in dealing with intellectual property matters in the large and small companies and as a small business owner. She has authored numerous books and publications on avoiding legal pitfalls in doing business. This article is excerpted from her new book, Advantage IP ? Profit from Your Great Ideas (Infinity 2005). For more information, Jean's website is http://www.smartfast.com.

Warning: Your Domain Name Could Infringe On Trademark Rights!

If you have or are about to purchase a domain name, YOU could be in trouble and you don't even know it yet...

See, what the domain sellers won't tell you is that the domain name you are purchasing or have purchased can possibly infringe on trademark rights and you can lose that domain name or even worse.

Trademark and servicemark laws apply not only off-line but on-line as well and they even apply to domain names.

Now, a trademark generally applies to goods where as a servicemark applies to services. For the purpose of this article I will refer to trademarks as the same rules apply.

A trademark can be a word, name, symbol, or device and it is used to distinguish and indentify the goods and services from one person or company from that of another.

The purpose of a trademark is to prevent confusion in the eyes of the consumer relating to particular goods and services. Basically, they are in place to prevent unfair competition.

So with that said, just because you purchased a particular domain name it does not necessarily mean you have exclusive rights to it.

If there is a trademark in your domain name, the mark owner has a legal right to send you a "cease and desist" letter and possibly take that domain name away from you.

If you don't believe a word I've said so far then I offer myself as proof because it happened to me. I recently lost one of my domain names under this exact same circumstance.

For legal reasons I can't tell you the domain name as I agreed to make no further references to it, but there were two words in my domain name that were associated with a trademark.

Now, I wasn't aware of this when I purchased the domain name. And I definitely wasn't aware of trademark laws.

Don't be ignorant on the subject like I was. You can avoid any potential problems by educating yourself and thereby preventing the samething from happening to you.

Don't make the same mistake that I did!

Do your research before you buy a domain name and make sure there is NO trademark associated with that name.

There are trademark search engines where you can type in a word or a phrase and it will tell you if it is a trademark.

You can visit the United States Patent And Trademark Office (USPTO) website to do a trademark search:

http://www.uspto.gov/

Now, in my case I chose not to fight the trademark dispute and gave up my domain name voluntarily. I felt it just wasn't worth the time, money and headaches to launch a fight over this.

If this should ever happen to you, you do have rights and there are proper channels to go through to settle the dispute. Contact a lawyer who specializes in this field.

And don't even think for one minute that this sort of thing can't happen to you. Trust me. If you have a trademark in your domain name it is only a matter of time before you get that letter in the mail like I did.

There are numerous cases all over the internet concerning disputes over trademark and domain names.

Don't you be one of them...

If you would like more information on the subject of trademarks and domain names then I highly recommend you visit this website:

http://www.chillingeffects.org/domain

This article and any links associated with it are for informational purposes only and not intended as legal advice. As always, speak to an attorney who specializes in this field in the event of a dispute.

Al Martinovic is the publisher of the Millenium Marketers Newsletter where you will find powerful concepts, killer strategies, useful tips and no bull business advice: http://www.milleniummarketers.com