International Filings

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Overview

When our clients need to protect their patents and trademarks outside of the United States, the Rothwell Figg International Filings team is known for utilizing a disciplined, highly systematic methodology for global patent and trademark management, and applying a business-oriented process. Accordingly, in a field which can be process-intensive, we provide clients with an efficient, cost/benefit-based system that results in international filings based on whether, and how, they make business sense.

Trademark and patent filings are often a global undertaking. Goods, particularly luxury goods, are bought and recognized around the world. Inventions can often be made, used, sold, imported, and exported in numerous countries. When thinking through a strategy for trademark and patent protection, a global perspective is important. However, it’s also exceedingly rare, and probably foolish, to file a patent or trademark application in every one of the 150-plus jurisdictions around the world.

Lots of law firms claim they strive to understand their client’s businesses. Many do. We, however, do much more. We apply business logic in what we see as a business context. More than anything, this disciplined approach sets us apart.

This meticulous process is augmented by nuanced knowledge derived from many years of experience, which helps us fill out the contours of the strategic picture. For example, in some countries, it can take six or more years to get a trademark registration and can take even longer to obtain a granted patent. It’s imperative, then, to take the long view – not only on how to file, but even whether a particular product's life cycle will justify filing at all.

Common client concerns are either specific use and protection issues in countries and markets which are important to their businesses, or questions of whether it makes sense for them to invest in patent or trademark protection at all in some places. Do they need to? Where should they consider filing to avoid the possibility of some competitor using their name or invention without permission? Properly done, this is almost always a rational cost/benefit analysis.

Though protection in more places is usually better than protection in fewer, there are always additional factors which come into play: time, internal effort by the company, and potential obstacles in getting registration or patent grant in a certain jurisdiction. Sometimes, it is not just a matter of the initial cost of filing, but the recognition that if a patent or mark is filed in dozens of countries, the resources it takes to manage and maintain all those registrations or patents can be overwhelming. We systematically analyze all of these factors before – not after – applications are filed.

We analyze which jurisdictions will be most important for protecting a mark or invention, and what markets are most important to a company's business. Following proven methods, we help clients develop a plan for considering global trademark and patent rights, and help them avoid what can become an overly complicated and technical problem by telling them what to expect in foreign countries. We help them think through the likelihood of success in getting registration or a granted patent and protecting a brand or invention in foreign countries, and help them sidestep the frustration and potential for very substantial wasted time and money if the wrong approach is taken.

We help clients understand what they may or may not need to do to protect their rights in foreign countries and whether they need to be concerned about protecting their rights abroad, and advise them concerning what kinds of strategies will address this in a cost-effective way. Not every brand or invention needs to be protected in every country every time. We help clients devise a way to discern which, where, and when – all with their business goals firmly in mind.

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