One way to address the problem of country selection is to file an international (PCT) patent application, which provides protection for a new innovation in over 150 countries for a period of about two and a half years after the filing of the initial patent application. A PCT application is a practical step that businesses can take to allow time to see how a product develops, before incurring the cost of filing separate patent applications – and it is only one of a few IP considerations every boss should keep in mind.
If, instead of filing a PCT application, separate patent applications are filed in different countries at an early stage, there is always the risk that the cost may be wasted if the product proves not to be successful in each of those countries.
As to which type of IP protection is necessary for a business, generally speaking any business involved in innovating should consider protecting ideas by filing patent applications, particularly where the ideas solve technical problems. Businesses creating products which are pleasing to the eye or which have a unique design should consider registered design protection. Every business that uses a name, brand or logo should consider trade mark protection.
Without IP protection your ideas, and even your brand, could be copied and stolen by others – this risk should be at the top of any IP considerations list. The ownership of IP also allows competitors, or potential investors, to see that your business is well-informed and serious about developing and protecting new ideas and products. IP assets, such as patents and trade marks, can also have value on your company balance sheet.
Following the UK’s referendum on EU membership, many businesses are considering the differences between IP protection in the European Union and outside of it. The main types of IP protection within the EU (patents, trade marks and registered designs) are also available in countries outside the EU. For trademarks and registered designs, it is currently possible to obtain a single registration which covers all of the EU member states, including the UK. We are likely to see some transitional provisions for businesses who own EU-registered trade marks and designs and who want to maintain protection in the UK, post-Brexit.
One of your IP considerations should also be that this position is different for patents, as the European Patent Office (EPO) is not an EU body, and therefore post-Brexit the UK’s relationship with the EPO will be unchanged.
For businesses looking to protect IP further afield in developed countries such as the US, China and Japan, the IP systems are reliable and provide a high degree of certainty for applicants. In less developed countries, the IP systems can be less reliable, but then the market for products is usually correspondingly smaller.[rb_inline_related]
The costs involved in obtaining and maintaining IP rights abroad can be a concern to some SMEs. Fees vary from country to country, and it is difficult to generalise, but the cost of filing a patent application in each overseas country can be between £2,000 and £3,000, with some countries being higher than this and others lower. Of course, post-filing costs depend on the complexity of the IP for which protection is sought and what objections are raised by local patent examiners during examination of the patent, and so can be more unpredictable.
When looking to protect the IP of exported goods, it is necessary to consider what type of IP protection will be most valuable. Broadly speaking, patents protect technical innovations, registered designs protect 2D and 3D shapes, and trademarks protect names, brands and logos. Some products, such as electronic devices, cars and even toys, may be protectable under all of these types of IP. For other products one particular type of IP protection will be most suitable.
Julian Asquith is partner and patent attorney, and Susan Bradley is a patent attorney at Marks & Clerk
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