Small Business Global IP
Why Should Your Small Business Protect its IP Abroad? 

For a small business, one of the difficult decisions early in the game is whether to file patent applications globally. After all - foreign patents are always more expensive than US patents.  But of course the issue is that many small businesses want to eventually become bigger businesses and compete on the international stage. So let's talk about some fo the things you need to be aware of in the complex world of international filing.

Sooner or later, many small businesses operate in more than one market selling their products or services or licensing and/or franchising their intellectual property (IP) rights and know-how beyond their national borders. IP rights, however, are territorial, implying that they are usually only protected in the home country or region where protection has been applied for and obtained. Protecting IP in export markets is therefore crucial so as to enjoy the same benefits of protection abroad as are enjoyed on the domestic market. You should carefully consider applying for IP protection well in time in all countries to which you are likely to export or license your product or service in the foreseeable future. So what are some of the considerations?

When Should Your Small Business Protect its Intellectual Property Abroad?

As a general recommendation, your small business should make sure to obtain adequate protection in all relevant export markets as early as possible.

With regard to patents for inventions, most countries allow a 12-month priority period from the date of filing of the first application for applying for patents in other countries. Once this period has elapsed you may no longer be able to obtain patent protection in other countries. This may signify an important loss of earnings from your export operations.

With regard to trademarks and industrial designs, most countries provide a 6-months priority period from the date of filing of the first application for applying for trademarks and industrial designs in other countries.

With regard to copyright, if you are a national or resident of a country party to the Berne Convention for the Protection of Literary and Artistic Works or member of the World Trade Organization (WTO) bound by the provisions of the TRIPS Agreement, or if you have published your work for the first time or at least simultaneously in one of the above countries, your copyright will be automatically protected in all other countries that are party to the Berne Convention or are members of the WTO.

How can Your Small Business Protect its Intellectual Property Abroad?

National Applications 

One option is to seek protection in individual countries separately by applying directly to national Industrial/Intellectual Property Offices. Each application may have to be translated into a prescribed language which is usually the national language. You will be required to pay the national application fees and, particularly in the case of patents, you may need to entrust an IP agent or attorney who will assist you in making sure the application meets national requirements. If you are still in the phase of assessing the commercial viability of an invention or are still exploring potential export markets or licensing partners, the national process would appear to be particularly expensive and cumbersome, especially where protection is being sought in a large number of countries. In such cases, the facilities offered by the WIPO-administered systems of international protection for inventions, marks and industrial designs offer a simpler and generally less expensive alternative.

Regional Applications 

Some countries have established regional agreements for obtaining IP protection for an entire region with a single application. Some example regional IP offices include:

International Protection

WIPO-administered systems of international protection significantly simplify the process for simultaneously seeking IP protection in a large number of countries. Rather than filing national applications in many languages, the systems of international protection enable you to file a single application, in one language, and to pay one application fee. These international filing systems not only facilitate the process but also, in the case of marks and industrial designs, considerably reduce your costs for obtaining international protection (in the case of patents, the PCT helps your Small Business in gaining time to assess the commercial value of your invention before national fees are to be paid in the national phase). WIPO-administered systems of international protection include three different mechanisms of protection for specific industrial property rights.

  • International protection of inventions is provided under the PCT system, the worldwide system for simplified multiple filing of patent applications. By filing one international patent application under the PCT, you actually apply for protection of an invention in each of a large number of member countries (now more than one hundred) throughout the world. The PCT system is comprehensive and we will be discussing it more than once on this website.
  • International protection of trademarks is provided under the “Madrid system.” The Madrid system simplifies greatly the procedures for registering a trademark in multiple countries that are party to the Madrid system. An international registration under the Madrid system produces the same effects as an application for registration of the mark filed in each of the countries designated by the applicant and, unless rejected by the office of a designated country within a certain period, has the same effect in that country as a registration in the Trademark Registry of that country.   
  • International protection of industrial designs is provided by the Hague Agreement. This system gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency.

All of this is a high level review of global IP protection. But often the devil is in the details. We will be describing in some more detail on this site in other articles how to plan for global patent. trademark, and industrial design coverage.

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