IP protection in the USA

You can register IP rights in the United States of America (USA) for patents, trade marks, designs and copyright.

The United States Patent and Trade Mark Office (USPTO) is the government body responsible for registering patents, trade marks, and designs. Copyright registration is administered by the United States Copyright Office of the Library of Congress.

Patent, trade mark and design applications can all be filed electronically through the USPTO website, and copyright through the Copyright Office website. Both websites provide searchable online databases.

In general terms, IP registration and protection in the USA is very similar to Australia. However, the litigation process is considered to be more aggressive and expensive compared to Australia. Some documents, such as oaths of an inventor required for patent, design and plant breeder's right applications, require authorisation.

Trade marks

The USA follows a first-to-use rule for obtaining trade mark rights, meaning the first person to use a mark in the USA will generally have superior rights to a person who files a trade mark application at a later date.
Protection is available in the USA for non-traditional marks such as three-dimensional shapes, sounds and smells.
USA trade mark examiners tend to require trade mark applicants to provide very specific descriptions of goods and services for which protection is sought. Australian businesses should seek advice from a USA attorney about the best way to draft their goods and services of interest.
USA Customs provide cross-border measures for the protection of registered trade marks.
Trade mark registrations may be removed from the register if they are not used for a period of three or five consecutive years after registration, depending on the jurisdiction.

Patents

Three forms of patent protection are available in the USA - 'utility patents' (for novel inventions or processes; equivalent to Australian standard patents), 'design patents', (similar to Australian registered designs) and 'plant patents' (similar to Australian plant breeder's rights).
The US is implementing a number of major reforms to its patent system. One of these is the adoption of a "first to file" rule for obtaining patents rights which is more similar to that applying in Australia and other countries throughout the world.
Certain types of subject matter are not patentable in the USA.

Designs

Designs are registered as 'design patents' in the USA. Protection is available for a period of 14 years. Design patent applications must satisfy a substantive examination, which involves conducting compliance checks and comparison with prior art.

Copyright

A registration process is available for the protection of copyright through the Copyright Office of the Library of Congress. The registration of copyright is not compulsory. However, it is a prerequisite to the filing of a lawsuit for infringement of copyright. USA Customs provide cross-border measures for the protection of registered copyright.

Plant varieties

Plant varieties can be registered as 'plant patents', and protection is available for a 20-year period.

Professional advice

If you are considering exporting to the USA, it is recommended that you contact an IP professional experienced in American IP law and trade to advise on local IP, customs and other laws regulating imports and trade in the USA. Australian IP professionals can facilitate such contact.

This information has been developed in conjunction with Griffith Hack Lawyers.