Hey there!
The situation is that I have a SaaS startup (AI writing assistant and language skill improvement app). We are based in the US (C-Corp), have a local and European trademarks, however, our customers and users are located throughout the world. We already see some IP threats and folks trying to mimic our brand, copy-pasting features in countries like Brazil, etc.
So, the question is, how I can take full control of our IP and legal protection given that we are a startup with a small team, relatively tiny budget, etc. I've found the article (https://ipnote.pro/en/blog/how-to-cut-costs-on-international-ip-registration/) where along with the advice like using the PPA filings and working with local attorney in the countries we want to get protected they recommend implementing an IP management system.
Would you do that, and what are your approaches to global brand and IP protection? Any recommendations on how to build the process and save a buck?
Hi!
I am a bit late to answer, but in my experience as a French IP lawyer, there are several things you can do!
First you need to analyze your proprietary software to check whether and how it's protectable.
e.g., Did you create it using open sources material? (If that is the case, then there are high chances that you won't be able to prevent others from copying it - copyright wise at least).
PPA are only available for "technical" inventions. Unless your software is highly innovative and meets the patentability requirements for software (quite an extensive threshold) patents or PPAs are not entirely suitable. Even more so since life spans of software versions are usually shorter than the time needed to be awarded a patent.
If you want to protect your creation. My first recommandation would be to make sure your interface design is original and protected by copyright. This would allow you to prevent any third party from third-countries from copying it as such and enable you to claim copyright over your product in most countries in the world (as copyright protection does not require registration - the US are an exception...).
Alternatively, worldwide trademark filing is a good idea. It is way cheaper than worldwide patent protection and can help you protect your bran, though you will need to identify your jurisdictions of interest.
It all depends on the facts.
I concur with previous answers: you need to single out the jurisdictions where you intend to offer your software for sale. Or, if you consider global sale, you need to target the main markets: US, Canada(?), EU, UK, Japan, etc...
Hope that helps!
(Not a lawyer, so this is from my personal experience & my own two cents)
It depends on the laws of the specific country. But typically, you can really only get some level of protection in a place where you operate commercially. A lawsuit usually is about economic loss (this is fairly common across countries) and it you don’t have revenue in Brazil, then you can’t argue that you’ve experienced financial damage.
Also, as per US law trademark is very different from a patent in that you have no trademark protection if you don’t commercially use the mark. I assume that this, too, is common.
IMHO opinion I would not worry about this outside the markets in which you operate. Beyond that, it’s up to you which parties you sue. At the end of the day, as a small startup you have monetary constraints that matter more than.
As for adding additional trademarks, I would focus only on countries where these can be successfully prosecuted. Because otherwise, what’s the point?
And if you’re not willing and able to spend the money to litigate (which, by the way, can be much cheaper in many places outside the us), I would not worry too much about it until you’re financially in a better situation.