Last updated: 
5 June 2020

IP is a valuable asset that can support you when doing business overseas. An Australian patent, trade mark, design or plant breeder’s right does not secure your rights outside of Australia. You should consider IP protection in the countries that you are planning on doing business, including manufacturing, or selling products online.

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.

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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, pharmaceutical products and meat.

Australia and the USA have a long-standing trading relationship that continues to strengthen. It is important to know how to register and enforce your IP rights if doing business or planning to do business in the USA.

IP protection in the USA

You can register IP rights in the 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.

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.

The USA is a member of international agreements for the protection of IP rights as administered through the World Intellectual Property Organization. See below for further details.

Trade marks

  • For more information see our comprehensive section Applying for a Trade Mark in the US.
  • Trade mark applications can be filed directly with the USPTO, or through the Madrid system for the international protection of trade marks.
  • When deciding on whether or not to enter the USA with your trade mark (and ideally before you apply for a trade mark in Australia), you should consider two things when applying for an international application through the Madrid system.
    • Firstly, you may wish to search the Global Brands Database to make sure your chosen trade mark is available to be registered.
    • Secondly, acceptable claims for goods and services vary across the world. Consider consulting the Madrid Goods and Services Manager database, which outlines what claims are acceptable in various jurisdictions globally.
  • Like Australia, the USA follows a "first to use" rule for obtaining trade mark rights. This means that the first person who can prove significant use of a trade mark in the USA will generally have superior rights to a person who files a trade mark application later. Even so, to better protect your trade mark you should consider registering it through the USPTO.
  • USA trade mark applicants must provide very specific descriptions of goods and services for which protection is sought. Australian businesses should seek advice from a USA 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 USA which can provide this advice.
  • A trade mark is registered for 10 years and can be renewed every 10 years.
  • 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.

Patents

  • 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 USA is a signatory to the international Patent Cooperation Treaty (PCT). Applications filed through the PCT can seek utility patent protection with the USPTO.
  • The USA now has a "first to file" rule for obtaining patents rights which is in line with other patent systems, including Australia.
  • USA law, like Australia and Canada, allows a one-year grace period for an inventor to register a patent from the date of public disclosure.
  • 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 USA which can provide this advice.
  • The Global Patent Prosecution Highway (gPPH) may be used by Australian applicants to speed up the examination process for corresponding patent applications filed in the USA.

Designs

  • Designs can be registered as design patents in the USA.
  • 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.
  • The USA is a member of the Hague Agreement and can therefore be designated in an international application where the applicant is able to establish entitlement. Australia is not currently a member of the Hague Agreement. 
  • Please check the USPTO website prior to filing an international designs application designating the USA as there are specific requirements particular to the designation of USA.

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.

We have more information on copyright for software products in the USA in our resource IP for Digital Business.

Plant varieties

  • 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 USA
  • 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 which can be used. These can involve mediation or arbitration and are often cheaper and faster than litigation.

IP law in the USA 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 USA can be reported to the National Intellectual Property Rights Coordination Center for potential investigation.

Doing business in the USA

Before entering the USA business market, there are a number of factors toconsider 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 in 2005 and ensures greater access to the USA market for Australian products. Please visit the Department of Foreign Affairs and Trade (DFAT) website for comprehensive information on the AUSFTA.

More information