Protecting your IP in other territories and managing your IP portfolio

Intellectual property (IP) rights such as patents, trade marks and designs are territorial rights. This means that rights granted in the UK for example, only have legal effect in the UK. If your business operates over international borders or if you have ambitions to expand your business into wider geographical territories, it is important to develop and manage an International IP portfolio which gives you the cover you need to protect your commercial activities. Considerations of where both you and your potential competitors have places of business, manufacturing sites or marketing activities will help define the scope of any IP portfolio.  Though, of course, you should also consider where your customers are.

In most cases, a first application for an intellectual property right will be made in the applicant’s home country.  This first filing can then be used as a basis for filing corresponding applications for protection in other countries.  In most countries around the world, it is possible to claim priority of your first filing date, provided a corresponding application is filed within a defined period, known as the ‘priority period’.  The priority period is 12 months for patent applications, but only six months for trade marks and designs.  An application claiming priority from a first filing is effectively backdated to the filing date of the first filing, which can be very important in ‘first to file’ countries.  This ‘priority year’ can be very useful to spread costs of obtaining IP protection whilst building their business and/or developing their inventions.

Expanding your IP portfolio into other countries can be approached in a number of ways. It is possible to file applications directly with the intellectual property offices based in the countries of interest.  This process can be intricate and varies from country to country.  It is also necessary to engage suitably qualified legal practitioners in each country and often translations into local language are required.  An alternative strategy is to make use of available international agreements or treaties. For example, for patents, European Patent Convention provides a means of obtaining patent protection for the European Union and the Patent Cooperation Treaty (PCT) provides a centralised application, search and examination system that enables and application to potentially obtain cover in over 150 countries from a single patent application.  The European trade mark convention and international Madrid System provides a similar mechanism to protect trade mark rights and the European Design Regulation and the international Hague system provides a means of protection a designs.

Planning an IP portfolio can be complex, given the range of national, regional and International protection systems available.  At Mathisen Macara, our attorneys and expert IP administrators are on-hand to guide you and to help you obtain the IP rights you need to protect your business.

However you choose to build your IP portfolio, there are questions to consider.

Where do I need rights?

Cost is an important consideration for all businesses. Protecting an IP right in any particular country has an associated cost and so obviously, the wider the geographical scope of protection, the greater the cost. Except for some huge, multi-national companies and brands, it is not common for applicants to seek to protect their IP rights in every part of the world. Commonly, rights holders will concentrate on the countries and territories which are most commercially important, whether for their own sales or manufacture or for those of their competitors. Our attorneys can help you to achieve that balance between cost and scope when deciding where to file your IP rights.

What rights do I need?

We have touched on patents, trade marks and designs above, but a fully-rounded IP portfolio may also include other rights, for example utility models, copyright and domain names. Some of these rights may be more important in some territories than in others.

It is also important to keep your IP portfolio up to date as your business and products develop.

How do I manage my IP portfolio?

There are usually ongoing costs associated with IP rights. Patents are subject to renewal payments (usually yearly) and eventually expire. Trade marks can be kept in force in perpetuity but there are also renewal fees to be paid (usually ten yearly), and often certain use requirements. The term of protection of a registered designs varies somewhat from country to country, but there are also generally renewal fees to pay to maintain protection in force.  The cost of maintaining an IP portfolio can thus be significant. It is important then to periodically review your IP rights to ensure that what you have is still relevant to your commercial needs. For example, it may be that the product protected by your patent has become obsolete. In this case, continuing to renew the patent may not make commercial sense. Or perhaps, the product is no longer sold or manufactured in a particular country. Ceasing payment of renewal fees only in that country could then provide a useful cost saving. If a product is no longer sold under a particular trade mark then dropping the trade mark registration may be an option to save costs. Decisions regarding the maintenance of IP rights must of course take into account any obligations which may be owed to licensees and any other contractual arrangements.

Our attorneys have experience of advising on the management of IP portfolios, helping to ensure that clients obtain and retain rights which are appropriate to their needs and cost effective.