Please note, IP registration and protection can be a complex process, especially in an international context. It is recommended that you seek advice from an IP professional.
The United States of America (USA) is Australia’s third-largest two-way trading partner in goods and services (after China and Japan). Our main exports include, beef, aeronautical equipment, meat and alcoholic beverages.
IP protection in USA
You can register IP rights in the US 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 US is very similar to Australia. However, the civil litigation process for enforcement is considered to be more aggressive and expensive compared to Australia.
- Trade mark applications can be filed directly with the USPTO, or through the Madrid system for the international protection of trade marks.
- Like Australia, the US follows a first to use rule for obtaining trade mark rights. This means that if there is a dispute between you and another party over a trade mark, whoever used it first commercially will own the right, even if they did not register it first. However, to better protect your trade mark you should consider registering it through the USPTO.
- Protection is available in the US for non-traditional marks such as three-dimensional shapes, sounds and smells.
- US trade mark examiners 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 US IP attorney about the best way to draft their goods and services of interest. A number of Australian IP firms have associate offices in the US which can provide this advice.
- Trade mark registrations may be removed if you do not file a Declaration of Use (or excusable non-use) with the USPTO five years after registration. More information on maintaining registration is available on the USPTO website.
- The USPTO is responsible for administering patents. Three forms of patent protection are available in the USA: –
- utility patents (for novel inventions or processes; equivalent to Australian standard patents)lasts a minimum of 20 years from the date of application
- design patents (similar to Australian registered designs) last 15 years
- plant patents (similar to Australian plant breeder's rights), last 20 years from the date of application.
- The US is a signatory to the international Patent Cooperation Treaty (PCT). Applications filed through the PCT can seek utility patent protection with the USPTO.
- The US now has a "first to file" rule for obtaining patents rights which is in line with other patent systems, including Australia.
- US law, like Australia and Canada, allows a one-year grace period for an inventor to register a patent from the date of public disclosure. This is different from some other countries, where public disclosure could prevent you from being able to obtain a patent.
- The application process for patents is complex and it is recommended that you seek advice from a patent attorney before going ahead. A number of Australian IP firms have associate offices in the US which can provide this advice.
- Designs are registered as design patents in the US.
- Protection of a design is available for a period of 15 years.
- Design patent applications must satisfy a substantive examination, which involves conducting compliance checks and comparison with prior art.
- 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.
- Plant varieties can be registered as plant patents, and protection is available for a 20-year period.
Enforcing your IP Rights in the USA
It is your responsibility to protect your IP. You should actively monitor the marketplace for any unauthorised use of your IP.
US Customs and Border Protection (CBP) provide cross-border measures for the protection of registered trade marks. If your trade mark or copyright is registered you can record it with the US CBP, a bureau of the Department of Homeland Security. This can be done electronically and will help the fight against fake and pirated goods being imported to the USA.
If you do find unauthorised use of your IP there are a few ways you can take action:
- notice and takedown procedure – If you find unauthorised use of copyright material online you can use this procedure to have the material removed. However this only works for websites owned in the US
- with the help of a lawyer, you can also use a cease and desist letter. This warns an offender of your rights and asks them to stop any activity that may cause infringement
- there are also several alternative dispute resolution methods that can be used. These can involve mediation or arbitration and are often cheaper and faster than litigation.
IP law in the US is complex and legal action should only be used when other enforcement methods have failed. If legal action is necessary, then you should consult a lawyer who specialises in IP law. Both administrative and civil actions can be commenced. In some circumstances infringement can be a criminal offence. Suspected violations of IP rights in the US can be reported to the National Intellectual Property Rights Coordination Center for potential investigation.
Doing business in the USA
Before entering the US business market, there are a number of factors to take into account including culture, politics and business etiquette. You can start by taking a look the extensive information about doing business in the US on the Austrade website.
The Australia-United States Free Trade Agreement (AUSFTA) came into effect 1 January 2005 and ensures greater access to the US market for Australian products. Please visit the Department of Foreign Affairs and Trade (DFAT) website for comprehensive information on the AUSFTA.
- Export Council of Australia
- Professional advice - If you’re considering exporting to the US, it’s 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 US. Australian IP professionals can facilitate this contact.
This information has been developed in conjunction with UK Intellectual Property Office.