Industrial intellectual property rights and patents can be registered with the national service for industrial intellectual property. Copyright is protected under the Decree-Law no. 2/2017 (Code of Copyrights and Related Rights). A new Code of Industrial Proprieties Rights (Decree-Law no. 23/ 2016) entered into force in February 2017. STP is a member of World Industrial Property Organization (WIPO). The Department Industry under the Ministry of Tourism, Culture, Commerce and Industry handles patents and copyrights.
Protecting Your Intellectual Property in STP
Several general principles are important for effective management of intellectual property (“IP”) rights in STP. First, it is important to have an overall strategy to protect your IP. Second, IP is protected differently in STP than in the U.S. Third, rights must be registered and enforced in STP under local laws. Your U.S. trademark and patent registrations will not protect you in STP. There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer copyright protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions.
Registration of patents and trademarks is on a first-in-time, first-in-right basis, so you should consider applying for trademark and patent protection even before selling your products or services in the STP market. It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government generally cannot enforce rights for private individuals in STP. Rights’ holders have the responsibility to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in STP law.
While the U.S. Government stands ready to assist, there is little we can do if the rights holders have not taken these fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the USG can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. Government advice be seen as a substitute for the obligation of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. Negotiate from the position of your partner and give your partner clear incentives to honor the contract. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in STP require constant attention. Work with legal counsel familiar with STP laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, both STP or U.S.-based. These include:
- The U.S. Chamber and local American Chambers of Commerce
- National Association of Manufacturers (NAM) International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- The Coalition Against Counterfeiting and Piracy
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
IP Resources
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
For information about patent, trademark, or copyright issues — including enforcement issues in the US and other countries — call the STOP! Hotline: 1-866-999-HALT or register at https://www.stopfakes.gov/welcome.
For more information about registering trademarks and patents (both in the U.S. as well as in foreign countries), contact the US Patent and Trademark Office (USPTO) at: 1-800-786-9199.
For more information about registering for copyright protection in the US, contact the US Copyright Office at: 1-202-707-5959.
For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, a free online training program is available at www.stopfakes.gov.
For U.S. small and medium-size companies, the Department of Commerce offers a “SME IP Advisory Program” available through the American Bar Association that provides one hour of free IP legal advice for companies with concerns in Brazil, China, Egypt, India, Russia, and. For details and to register, visit: https://www.americanbar.org/aba.html.
For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: https://www.stopfakes.gov/IPR-Toolkits This site is linked to the USPTO website for registering trademarks and patents (both in the U.S. as well as in foreign countries), the U.S. Customs & Border Protection website to record registered trademarks and copyrighted works (to assist customs in blocking imports of IP-infringing products) and allows you to register for Webinars on protecting IP.
The U.S. Commerce Department has positioned IP attachés in key markets around the world. You can get contact information for the IP attaché who covers STP at: www.trade.gov or contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov. Also refer to the State Department’s Investment Climate Statements, which include information on the protection and enforcement of intellectual property rights in foreign countries, at the following website: https://www.state.gov/investment-climate-statements/.