IP protection in the USA

You can register intellectual property (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.

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 require authorisation, such as oaths of an inventor required for patent, design and plant breeder's right (PBR) applications.

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/or 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 PBR).
  • 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 similar to that 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.

Plant varieties

  • Plant varieties can be registered as plant patents, and protection is available for a 20 year period.
Last updated: 
22 March 2016