Introduction to IP Portfolio Building Part III: IP Protection Outside the USA

As your business expands into international markets, your intellectual property (IP) strategy must expand with it. U.S. patents and trademarks offer no protection outside the United States. To preserve exclusive rights abroad, companies must file foreign patent and trademark applications in jurisdictions where they intend to operate, enforce, or commercialize.

While there is no such thing as a global patent or global trademark, several international agreements and procedural frameworks—such as the Patent Cooperation Treaty (PCT) and Madrid Protocol—make it possible to streamline the foreign filing process. However, depending on your business goals, direct national filings may offer a more efficient or cost-effective path.

A. Patents Abroad: PCT vs. Paris Convention Direct Filing

Patent rights are territorial. A U.S. patent protects your invention only in the United States. To protect the same invention abroad, you must file separate applications in each country or region of interest.

The Patent Cooperation Treaty (PCT) offers a unified international application process, providing up to 30 or 31 months from the earliest priority date to enter individual national phases in over 150 countries. This route is especially helpful for companies still evaluating where to seek protection and for those who need to defer legal expenses.

The PCT is not always the best or most cost-effective path. If you already know you will file in only one or two key countries (for example, the EU and China), you may prefer to use direct national filings under the Paris Convention, which allows foreign patent applications to be filed within 12 months of a U.S. filing and still claim priority. This approach can reduce costs by avoiding PCT-related fees and delays.

Use PCT when:

• You need more time to assess foreign markets.

• You are considering filing in several countries (generally 3 or more).

• You want the benefit of a centralized international search and preliminary examination.

  
  

Use direct (Paris Convention) filing when:

• You know exactly which countries matter most.

• You only need protection in a few jurisdictions.

• You want to avoid the added cost and complexity of the PCT process.

  
  

B. Trademarks Abroad: Madrid Protocol vs. Direct National Filings

Trademark protection is also territorial. A U.S. registration does not protect your brand abroad. To secure trademark rights internationally, companies may file either:

• A centralized application under the Madrid Protocol, or

• Direct national applications in each country of interest.

  
  

The Madrid Protocol allows you to file one international trademark application—based on a U.S. application or registration—and designate over 100 member countries for protection. However, each designated country will still examine your application under its own laws.

When fewer countries are involved, direct filing may be the better choice.

Some jurisdictions, such as Canada, China, and India, offer straightforward national trademark systems that allow you to file directly, often with local counsel. This may result in faster approvals, greater flexibility, and lower cost, especially if only one or two jurisdictions are involved.

Use Madrid Protocol when:

• You want to extend your U.S. application or registration to multiple countries.

• You need centralized management and simplified renewals.

• You expect to build a broad international brand presence.

  
  

Use direct national filing when:

• You’re targeting just one or two markets.

• The country in question offers efficient or inexpensive local filing.

• You want more control over the application in a high-risk or high-priority market.

  
  

C. Enforcement and Legal Infrastructure Matter

Obtaining IP rights abroad is only one part of the strategy. You must also assess whether those rights are enforceable and whether litigation or licensing would be practically and economically viable in a given country.

Some jurisdictions—like the United Kingdom, Germany, Japan, and South Korea—offer robust IP enforcement mechanisms. Others may grant rights but offer limited or inconsistent enforcement.

Recent developments, such as the launch of the Unified Patent Court (UPC) in Europe, are improving the enforceability of patents in participating EU member states. The UPC allows for enforcement of a unitary European patent across multiple countries through a single litigation system.

Tip: Enforceability, local IP culture, and judicial efficiency should influence where you invest in foreign filings. IP protection without practical enforcement may not justify the cost.

D. Strategic Market and Budget Planning

Foreign filings require careful planning and prioritization, especially as the costs—translation, local counsel, government fees, and renewals—add up quickly.

Rather than pursuing protection everywhere, consider:

• Where do you expect revenue or significant market share?

• Where are your products made or distributed?

• Where are your top competitors operating or manufacturing?

• Which countries are high-risk for counterfeiting or IP theft?

  
  

A limited number of well-chosen jurisdictions often provides better ROI than blanket filings across dozens of countries.

Key Takeaway: Your foreign IP strategy should balance commercial potential with legal viability and enforcement practicality. Filing decisions should be aligned with business strategy, not driven by legal formalities alone.

E. Summary: Choosing the Right Path for Global IP Protection

• U.S. patents and trademarks do not protect you abroad.

• Use the PCT to delay foreign patent filings when you need time or are considering multiple countries.

• Use the Paris Convention for direct filings when you're only targeting one or two key countries.

• For trademarks, consider the Madrid Protocol for multi-country protection, or direct filings when only a few jurisdictions are needed or when local nuances are critical.

• File where you will sell, manufacture, or enforce—not everywhere.

• Evaluate each country’s enforcement landscape before investing in protection.

  
  

Coming Next: Part IV – Managing a Growing IP Portfolio

In Part IV, we will explore how to manage and grow your IP portfolio over time—through regular audits, budgeting, enforcement planning, and strategic alignment with evolving business goals.

Need help mapping your international IP strategy?We assist clients with both PCT and direct foreign filings, and provide strategic guidance on where and how to protect IP worldwide. Contact us to develop an efficient, business-aligned international protection plan.