Frequently Asked Questions

Common Questions about Establishing a U.S. Operation

1. Trademarks. Unlike in civil law countries, trademark and service mark rights arise in the United States from using the mark in commerce in or with this country. Important additional rights are obtained by federally registering trademarks and service marks with the U.S. Patent and Trademark Office (the “PTO”). Checking the PTO database of federal trademark registrations (www.uspto.gov) prior to introducing new trademarks or service marks is always prudent. Many trademarks are never registered, however, so more comprehensive searching will be required to determine whether the proposed use may infringe a senior user’s rights.
2. Copyrights. The United States, along with almost all other industrialized countries, is a party to the Berne Convention, which affords copyright protection from the moment of creation. Works first published in the United States, or in another country also party to the Berne Convention, are protected under U.S. copyright laws. Important additional rights can be obtained by registering the copyright with the U.S. Copyright Office. For more information visit the U.S. Copyright Office website at www.loc.gov/copyright/.
3. Patents. Foreign parties must apply for patent protection with the PTO to obtain protection under U.S. patent laws, regardless of the existence of foreign patents. Failure to apply for patents in the United States could result in loss of valuable legal rights in company innovations. The U.S. application must be filed by the earlier of one year from when the invention was first publicly used or placed on sale anywhere in the world (e.g., displayed at a trade show) or one year from the earliest filing date of a patent application in another country.
4. Business Process and Business Method Patents. The United States provides for broader patent protection than many foreign countries in the area of business processes, business methods, computer-aided business operations and certain types of software. Foreign companies should consider evaluating if their business processes or software programs can be patented in the United States, even if they cannot be patented in home countries. Again, remember the filing deadlines outlined above.
5. Trade Secrets. Even if a technology or process cannot be protected under patent or copyright laws, it may be protected under trade secret laws. If proper steps are taken, the owner of the intellectual property can preclude others from using the relevant technology, designs, methods of operation or other “know how” and maintaining a proprietary interest therein. The best example of this is the recipe for Coca-Cola, which remains a trade secret after more than 100 years. Obviously, know-how will be treated as a trade secret by the law only if the owner treats it that way. Steps must be taken to keep the information secret. Such steps usually include confidentiality agreements, confidentiality provisions in employment agreements, limiting access to such materials through the use of passwords, physically secure areas, distribution only on a “need to know” basis and marking materials as proprietary and confidential.

If companies coordinate their U.S. and European patent and trademark filings and comply with international treaty requirements (including certain 12-month and 6-month time limits), then they may obtain improved priority claims for their patent and trademark rights in the United States. A thorough review of existing foreign rights is therefore recommended prior to arriving in the United States.

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