Susanna Stephen

Protecting Your IP Abroad

Does filing a patent/design or registering a trade mark protect you abroad?

Intellectual property (‘IP’) rights are territorial, and they only give you protection in the countries in which they are registered. If you only have UK protection, others may be legally allowed to use your IP abroad without infringing your rights.

What do I need to be mindful of when it comes to overseas markets and my IP?

If you are intending to trade overseas, you should think about registering your IP rights abroad before entering the market. You should look to protect the markets you want to trade in or wish to license your invention in, and also potentially infringing markets. Otherwise, you won’t be able to prevent others from copying your products, branding or trademarks, which could ultimately mean you lose sales.

I’ve got a UK patent/UK design/UK trade mark, can I extend my protection abroad?

If you already have IP protection in the UK, you may be able to make use of a grace period (12 months for a patent, and six months for trademarks and designs) enabling you to apply for foreign protection. There are some international systems which can make the foreign application procedure simpler and more cost effective. For example, the Patent Cooperation Treaty allows you to file an international patent application within the 12 month grace period, before converting it into national or regional applications.

Is it expensive to protect my IP abroad?

Overseas patent protection can be costly, so countries should be chosen carefully, particularly as they cannot be added to the list later. A good guide is to decide where the main markets are likely to be, and to identify your main centres of production. For trade marks, costs depend very much on the countries chosen. International systems whereby trade marks can be protected in a number of countries at once can be a cost-effective solution, such as the Madrid Protocol system. For innovations with an important visual element, registered designs can be a relatively low cost way of enjoying protection.

Which overseas markets should I protect my IP in?

Generally, the most important countries are those where you intend to sell or make your products, or provide your service. Counterfeit goods may be an issue, so obtaining IP protection in your country of supply can help to prevent the manufacture of counterfeit goods at the source.

Can my UK representative deal with filing/registering patents/designs/trade marks abroad?

Your local IP attorney will have detailed experience on obtaining IP protection abroad and advising on strategy, and will have the necessary overseas contacts to enable the filing, examination and granting of IP applications.




Susanna Stephen

Susanna is a European Patent Attorney, Susanna enjoys working with a variety of clients from SMEs and university technology transfer companies to multinational chemical companies.

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