In a global economy based upon instantaneous communication, securing intellectual property protection worldwide has never been more important. We offer assistance to our clients in pursuing all forms of intellectual property protection in foreign countries and especially in neighboring countries such as Canada and Mexico. We coordinate with foreign specialty firms practicing before foreign tribunals and agencies, to secure, defend and exploit our client’s IP rights, worldwide. As a full service intellectual property law firm, we provide legal counseling in intellectual property law for both domestic clients and clients overseas.
Patent Attorney Services
Grant’s Law Firm coordinates with a large network of overseas attorneys to seek international patent protection for our U.S. domestic clients. Grant’s Law Firm’s overseas attorneys have extensive experience with the patent laws and procedures of their respective nations. With their help, Grant’s Law Firm provides counseling for domestic clients regarding foreign intellectual property laws and assists domestic clients in obtaining patents overseas.
Grant’s Law Firm advises overseas clients on U.S. patent law and the prosecution of patents in the United States Patent and Trademark Office. Overseas inventors and corporations seeking opinions on whether an invention is patentable in the U.S. or seeking an opinion whether a product may be found to infringe an issued U.S. patent can rely on Grant’s Law Firm’s extensive experience and knowledge of U.S. patent law.
Patent Cooperation Treaty (PCT)
Grant’s Law Firm also represents both overseas and domestic clients seeking patent protection through the Patent Cooperation Treaty (PCT). The PCT provides for a unified patent application filing procedure in all signatory countries, now including most of the countries in the industrialized world. The filing of a PCT patent application does not lead to the issuance of an “international patent,” as no such thing exists. A PCT applicant must ultimately file for a patent in each individual country or region in which the applicant seeks patent protection. However, the PCT provides many advantages for patent applicants as compared to traditional filing procedures.
The first step in filing a PCT application is to file an application with a participating patent office, referred to as the “receiving office.” Any individual that is a resident or national of a member nation is eligible to file a PCT application. If the applicant has previously filed a national application for the invention in the U.S. or other country, the applicant then has one year from the filing date of the national application to file a PCT application claiming priority to the previously-filed national application. The PCT application will then be searched and examined resulting in the issuance of an “International Search Report” and an “International Preliminary Report on Patentability.” Although these reports are non-binding, they give the applicant an idea of the state of the prior art and any potential road blocks to receiving a patent before the applicant’s deadline for filing national applications in the patent offices of the individual countries or regions (such as the European Patent Office). If the applicant wishes to proceed with the applications in the individual countries, the applicant must enter the “national phase” in the selected countries, typically no later than 30 months from the international filing date of the PCT application.
One of the primary benefits of the PCT system for a patent applicant planning to file for patent protection in several countries is that it extends the national filing deadline from 12 months after the priority date of the original application to 30 months or more after the priority date. This extended time period provides an applicant with several advantages. Firstly, the preliminary patentability report gives an applicant an indication of the patentability of the invention before incurring the expense of filing multiple national applications. Secondly, the extended time period gives an applicant additional time to evaluate the market potential of the invention and other factors to be weighed in determining whether to pursue patent protection and in what countries to pursue that protection before incurring the expense of filing the national applications. Additionally, the extended time allows an applicant to delay the payment of national filing fees.
Grant’s Law Firm represents clients overseas in filing U.S. national phase applications based on pending PCT applications. Also, through our associations with law firms in many overseas countries, Grant’s Law Firm represents U.S. clients not only in the filing of initial PCT applications, but also in the prosecution of foreign national stage applications.
Trademark Attorney Services
Grant’s Law Firm represents U.S. clients seeking trademark registrations overseas as well as overseas clients seeking U.S. trademark registrations with the United States Patent and Trademark Office.
Trademark owners should note, that trademark protection in one country does not provide any protection in other countries. For example, a United States trademark registration is only effective in the United States and will not offer any protection against infringing uses in the European Union. To be protected in the EU, a trademark owner must obtain a separate registration for that jurisdiction.
In our increasingly globalized society, trademark owners must ensure that the goodwill they have established in their trademarks are protected in those countries where an owner is expanding or might want to expand too.
Grant’s Law Firm is experienced in helping domestic clients secure foreign trademark registrations both through direct filing with foreign nations and via the Madrid Protocol. The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the treaty-signatory countries by filing a single application, known as an “international application.”
The Madrid Protocol provides a cost-effective and efficient way for trademark holders — individuals and businesses — to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members.
Litigation, Dispute Resolution, and Licensing Services Grant’s Law Firm represents overseas and domestic clients in a wide range of intellectual property-related litigation proceedings in U.S. courts, dispute resolution proceedings and before the U.S. Trademark Trial and Appeal Board. Grant’s Law Firm also represents both overseas and domestic clients in the negotiation and drafting of multinational licensing agreements.
Contact a lawyer providing International Patent and Trademark Legal Services for domestic and international clients.