How Do I Protect My Intellectual Property Overseas?
It is important to protect your intellectual property before engaging in international trade. Read more here.
If you’re considering expanding your business overseas, it is important to understand the intellectual property (IP) laws of the country you are doing business with. The registration of IP rights differ in each country, which means that your registered Australian trademark, design or patent will not provide you with the same protection in other countries. Above all, planning to protect your IP overseas ensures that you don’t infringe existing IP rights, exclude other businesses from using your product or service and helps you establish your market position. This article will discuss the steps required to understand the international aspects of IP rights and how to protect your IP overseas.
1. Understanding IP protection overseas
Protecting your IP assets before entering the international market can bolster your competitiveness and reduce the risk of IP infringement. However, before making any major commercial decisions, it is beneficial to consider the following questions:
- Would I generate the best returns by establishing my product in Australia or would I have a competitive advantage by entering the international market?
- Do I have the resources to commercialise outside Australia?
- Will I need financial support?
- Should I manufacture and export my product within Australia or should I outsource production overseas?
- Do I have the means to successfully market my product in other countries?
2. Determine your IP rights
The level of protection afforded overseas depends on the type of IP rights you have. For example, you might have a registered patent, trademark or design. You can read about the different types of IP here.
As well as determining your IP rights, it may be useful to commission an IP audit of your business name, brand, products and services. This helps identify all relevant IP as well as your legal rights in relation to your business’ assets.
3. Research IP records overseas
Once you’ve identified the kind of IP rights you have, you can check if your IP is available overseas. This involves researching the IP records of the country of interest and checking whether there may be any potential infringement issues. For example, you can use the World Intellectual Property Organization (WIPO) Trade mark search to see if your trademark already exists. IP Australia also provides a guide on how to avoid infringing on others’ IP.
4. Registering your IP overseas
As previously mentioned, every country has different IP laws. It is important to understand the risks and the level of protection provided in relation to your IP.
A patent registered in Australia only provides protection within Australia. Generally, you have two choices in obtaining similar protection overseas:
- Make separate patent applications in countries you want to do business with.
- File a single international application under the Patent Cooperation Treaty (PCT). This single application has the same effect of filing separate applications.
There are two options when applying for overseas applications:
- Apply separately to each county.
- Apply under the Madrid System. This system requires you to lodge one application and to pay one set of fees. Where a country is not a member of the Madrid system, an application for trademark registration must be filed directly with that country.
Similarly, design applications will usually have to be filed with the country you’re planning to do business with. However, it is recommended that you seek legal advice to understand the legal requirements for different countries.
5. Developing an IP defence strategy
As well as registering your IP, it is also important to develop an IP defence or enforcement strategy. Since IP litigation can be costly, you must consider the alternative options in the event when someone infringes your rights.
6. Seek out legal advice
Enforcing your IP rights overseas is a complex process. Therefore, you may need to seek legal advice to help you to handle the above issues.
In conclusion, protecting your IP rights internationally may be just as important as protecting your IP rights in Australia. If you don’t protect your IP in the country you’re planning to do business with, other overseas businesses may be able to copy and sell your products or services. As with any IP application for registration made in Australia, it is recommended that you seek legal advice from qualified IP lawyers before making any major international commercial decisions.
Vanie is a legal intern at Lawpath and is currently studying a Bachelor of Arts and Laws at Macquarie University. Vanie has a keen interest in legal technology particularly in artificial intelligence and its impact on protecting digital rights.