Protecting your Brands, Designs and Technology Abroad

Photo Jeremy Segrott Licence CC BY 2,0 Source Wikimedia Commons

 

Jane Lambert

According to Business Wales, International Trade Week takes place between 31 Oct and 4 Nov 2022.  The Welsh Government has published an Export page which provides advice and guidance on exports and overseas investments.  One of its recent articles is Protecting your UK Intellectual Abroad which it published on 16 Sept 2022.

That article advises:

"To protect your intellectual property outside of the UK, you usually need to apply in each country you want protection in."

Although the author has confused intellectual property with intellectual assets this is good advice.  As the article also says, intellectual property rights are territorial and if you want to protect your brands, designs, technology or works of art or literature outside the United Kingdon you probably need to apply for a trade mark, registered design or patent in the countries or territories in which you seek protection.  Works of art and literature and the performances of actors. dancers, musicians and singers and other performing artists are slightly different since copyrights and rights in performances arise automatically in each of the countries that belong to the Berne and Rome Conventions.  

In Protecting Intellectual Assets Abroad (6 Oct 2022 IP after Brexit)  I explained that trade marks, design registrations and patents could be obtained singly by separate applications to each national or regional intellectual property office or collectively from a single filing under the Madrid Protocol, Hague Agreement or Patent Cooperation Treaty.   Applications for patents under the PCT proceed in two phases.  As novelty, inventiveness, and utility are required by all countries' patent laws applications are examined centrally for those requirements.  If an invention passes that first stage it proceeds to national intellectual property offices which consider whether it complies with their local laws.  Equivalent procedures take place for designs under Hague and marks under Madrid.

Intellectual asset owners should beware that overseas protection can be very pricey.   In addition to the prosecution fees in each nation or regional office, registrations have to be renewed every so often.  In some countries, patent renewal fees will actually increase as the patent ages.  The validity of your patent, trade mark or design registration can be challenged in the courts or intellectual property offices of the countries in which you seek protection.   If anyone infringes your intellectual property right, you usually have to go to court to enforce it.  Defending invalidity or revocation claims or pursuing infringers can be very expensive, particularly in common law countries like Australia. Canada, Hong Kong, India, the Irish Republic, New Zealand, South Africa or the USA.  Unless your company is very well established you will probably benefit from taking out before-the-event insurance.

How do you decide where to protect your intellectual assets?   Generally, it should be where you have a market or a competitor.   If your company is big enough to export or invest abroad it has probably developed an intellectual property strategy which is integrated into its business plan.  If not, identify the asset that needs legal protection in the country concerned and seek the appropriate protection.

The Menai Science Park will hold a hybrid in-person and online seminar on IP protection overseas on 18 Nov 2022 at which expert patent attorneys,  specialist IP insurance brokers and lawyers from Ireland, India and Argentina will discuss those topics.  The science park expects an international audience for that event.  That is just one of many services that M-SParc offers to businesses in Northwest Wales that want to export or invest abroad.  We can introduce you to the UK's IP attaches abroad, the British Library's Business and IP Centre and its regional partners as well as many other resources.

Anyone wishing to discuss this article may call me on 020 7404 5252 or send me a message through my contact page,