When seeking to expand into new markets or territories, it’s important to ensure IP protection is first in place. Dr Peter Wilson sets out the IP elements to consider when developing or updating an export strategy.
When companies consider their assets, they may think first of tangible assets, such as equipment, stock, buildings or products. But, intangible assets are just as (and often more) valuable, and can be impossible to replace.
Brands and logos, company manuals and operating procedures, know-how and expertise, advertising materials, design, technology... your company owns valuable intellectual property (IP) that will help it to grow and expand overseas. But, to do that effectively, your IP needs to be appropriately protected with trademark, patent and/or design registrations, and associated filings and agreements.
Step 1: Safeguard your brand and product names as trademarks
- Why: By registering your unique company and brand names as trademarks, you’ll have the rights and procedures in place to stop others from using them without your permission, or registering them for their own use.
- Where: Ideally, you should begin by registering trademarks in your home market and key markets of trade, manufacture and transport.
- Extending protection into new export markets: National trademark registrations also afford a six-month ‘right of priority’ in most countries (meaning that you have a priority right to the registered name or logo should you seek to extend your rights into new markets). However, you can still file applications after this date, providing the trademark hasn’t already been registered in your sector (or class).
- How: Brand owners can choose to register their rights as individual applications in each chosen country, register an EUTM for all EU countries, or a Madrid Protocol application (covering more than 90 countries, including China, Japan, Korea, US, Australia and the EU).
Step 2: Protect inventions as patents
- Why: Patent registration gives you the right to stop others from ‘working your invention’. Products and processes from all sectors of industry can be protected with patents, don’t assume it’s only the hi-tech companies that can benefit.
- Where: Businesses generally begin with a national right. But note, certain rules apply; most importantly, you must file the patent before disclosing the invention
- Extending protection into new export markets: National rights award a 12-month ‘right of priority’ in which that same patent can be filed in new territories.
- How: Companies can seek additional individual national applications, but it is generally advisable to use one of the multi-national patent systems such as the EPC (for the EU, plus other European countries) or PCT (provisionally covers more than 180 countries, and delays national filing requirements).
Step 3: Don’t overlook design protection
- Why: The look and feel of a product can be as important to its market success as its function. In some countries, including the UK and the rest of the EU, unregistered design rights come into effect on creation; however, where the design is a key feature of a product, model or drawing, it is generally advisable to register a design right to protect it. Registered rights are stronger, and last longer.
- Where: For a national (e.g. UK) registration, the design must be registered with the national patent and trademark office. Some countries have a grace period for prior disclosure, but beware of jeopardising patent rights for the same product.
- Extending protection into new export markets: It is generally possible to claim a priority date for a design application made in another country within six months of the first filing.
- How: Companies can seek additional individual national applications either directly or through the Hague Agreement; a Community Registered Design also has effect across the whole of the EU. The duration of protection varies by country (e.g. it’s 25 years in the UK and EU; 14 in the US).
Step 4: Don’t overlook other valuable IP
Other unregistered forms of IP include copyright and unregistered design protection, as well as the know-how shared with agents, distributors, manufacturing partners and licensees. These are all valuable forms of IP, which should be recorded and protected in writing, where possible.
A six-point strategy for success
1. Identify: Review your intellectual assets and processes in order to capture your IP rights that you have – or should register.
2. Value: What are your rights worth to you (if you lost them or other people used them)?
3. Protect: Both registered and unregistered IP rights – and remember that rights have geographical scope.
4. Beware other people’s rights: Ensure that you’re not infringing existing rights and consider monitoring what your competitors are doing for market insight.
5. Exploit: Use the rights yourself, or sell/license them to others.
6. Enforce: Act quickly to stop infringers – you don’t always have to end up in court.
Finally, seek advice: the systems are complex with various national and multinational systems to consider. Prepare yourself in advance to make best and most cost-effective use of the IP registration process.
Dr Peter Wilson is a Patent Attorney in the Norwich office of Novagraaf UK.