With offices in Taipei, San Francisco, Beijing, and Shanghai, Wang & Wang assists clients with the filing of international copyrights, trademarks, and patents. When businesses move the manufacture and sale of goods across national borders, it is imperative to maintain control of valuable intellectual property ("IP") assets. Our attorneys help clients navigate the overlapping laws, treaties, and agreements that govern the dissemination of intellectual property.
Ownership and control of intellectual property is granted on a territorial basis, meaning that rights are created by - and only apply in - the country in which the intellectual property originated. Therefore, in order to protect IP assets in countries outside of the United States, corporations with enterprises abroad must establish protection in each country where they do business. In order to facilitate the procurement of IP rights across national lines, many countries adhere to international conventions and treaties, such as the Berne Convention, Madrid system, and Patent Cooperation Treaty, which are administered through the World Intellectual Property Organization ("WIPO"), a specialized agency of the United Nations.
The World Trade Organization ("WTO") maintains its own intellectual property rules through its agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"). TRIPS covers copyrights, trademarks, geographical indications, industrial designs, patents, layout-designs of integrated circuits, and undisclosed information, including trade secrets and test data. The agreement sets out minimum standards of protection, methods of enforcement, and dispute settlement procedures.
International Copyright Filings
Many industrialized nations belong to the Berne Convention for the Protection of Literary and Artistic Works, which is a series of six treaties covering copyright protection. Under the Berne Convention, member countries must recognize the copyright of works from other member countries in the same manner that they recognize the copyright of their own nationals. For example, United States copyright law applies to works published or performed in the U.S., regardless of where the work originated.
The Berne Convention compels member nations to recognize copyright ownership without requiring formalities, such as notice or registration. Also, the term of copyright protection cannot be less than the life of the author plus 50 years.
The United States and China are members of the Berne Convention, while Taiwan is not. At Wang & Wang, we assess how the differences among the nations' copyright laws affect our clients' filing options.
International Patent Filings
The Patent Cooperation Treaty ("PCT") allows patent applicants to file an "International Application" in their home country's patent office under the authority of WIPO. However, an International Application does not eventually become an international patent; rather, the filing party must choose the countries in which it wants protection. This step poses a challenge to many businesses because the actual entry of applications in multiple countries can be costly. Through careful consideration of our clients' business plans, attorneys at Wang & Wang help clients determine the appropriate countries or regions for pursuing patent protection.
The Paris Convention, which predates the Madrid system, also addresses the protection of patents in foreign nations. One of the first intellectual property treaties, it establishes what is commonly referred to as the "priority right," which provides that an applicant from a member nation may use its first filing date as the effective filing date in every member nation. This system prevents another party from usurping rights in intellectual property by filing in a foreign nation before the original rights holder. The Paris Convention's priority right also applies to trademarks.
International Trademark Filings
The Madrid system, through both the Madrid Agreement and the Madrid Protocol, covers international trademark matters. By allowing proof of registration in the trademark's home country to be deposited in a Central Registration Bureau, the Madrid system facilitates registration of trademarks in member countries.
While the United States and China are members of the Madrid Protocol, Taiwan is not. Attorneys at Wang & Wang have experience filing trademark registrations and procuring trademark protection in both China and Taiwan.