Overseas markets present exciting opportunities for domestic companies, but it is commonplace for companies to overlook the need to protect their intellectual property (IP) overseas, particularly in the high-growth markets of Asia.
IP rights are generally territorially limited, and thus a UK patent extends to the UK, but not beyond. Considering your possible export markets at an early stage, therefore, is an important part of developing a viable IP portfolio; only then can the necessary filings be carried out in the countries of interest, thus securing at least some provisional IP protection in those countries.
This early thought process is especially important when it comes to particular IP rights, such as patents or registered designs, since in many countries absolute novelty at the filing (or priority) date is required in order for such IP rights, once granted, to be validly enforceable. After all, that absolute novelty requirement cannot be met if you (or third parties) have already launched corresponding products before the relevant filing or priority dates.
The need for early thinking does not mean, however, that all applications need to be filed up front.
That is because there are certain mechanisms in place to allow deferment of the choice of countries:
- The usual mechanism is the provision of claiming priority . This is a process whereby a later filing can effectively claim an earlier filing date that of the first filing for that design or invention. For patents there is a 12 month priority period from the first filing, whereas for designs there is only a 6 month priority period.
- Filing a PCT patent application is another mechanism. Applicable only to patents, it defers the choice of countries for most industrialised nations (whereby it is also sometimes called an international patent application) for a total period of up to 30 months from that first filing.
- A small number of countries also offer a grace period to excuse earlier publications by the applicant. This can be helpful for a limited period of time (generally either 6 or 12 months), but is effective only in those countries.
The ultimate decision on where to file, however, remains a difficult question and needs to strike a balance between paranoia and your budget.
It can be convenient to secure a patent in all probable markets since that then allows enforcement action to be taken against infringing activities in all those countries.
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