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IP and the Global Market Place
International IP protection
If you intend to trade overseas or via the
internet you should consider seeking IP
protection in the relevant countries in which you wish to operate.You need to seek IP protection in each country according to the laws and conventions of that country, although there are international agreements in place, which make it easier to obtain IP rights internationally. Develop an international IP strategy that suits your identified markets, business goals and resources.
Each IP right involves different treaties and
application processes
Different IP treaties and conventions, all with
varying time limits and costs, assist you in
seeking foreign IP protection. In some cases,
strategic use of the time limits provides
valuable, additional time to decide whether or
not you wish to proceed with protection in all
the markets you initially identified. Under
some treaties, you maybe able to delay the
costs of international protection which is a
significant help to smaller companies. Be
aware of the strategic options available to
you.
Patenting overseas
If you are looking towards protection in
Australia and other countries you need to
know that there is no such thing as a 'world
patent'. An Australian patent provides
protection only within Australia. To obtain
similar protection in other countries you generally have 2 choices:
- make separate patent applications in
each country. This can be cost effective
when you file in only a few countries;
or
- file a single international application
under the Patent Cooperation Treaty
(PCT) which is administered by the
World Intellectual Property
Organization (WIPO).
The PCT is a streamlined way of applying in a number of countries including Australia at the same time as it enables you to file a single international application that has the same effect as a separate filing in each of the 120 + countries that are involved in the treaty. A patentability search and opinion carried out by IP Australia on your invention will assist you in assessing the likelihood of you gaining protection in Australia and overseas at an early stage before committing to the high costs involved. You also gain extra time to assess the value of your invention and its export potential before committing to the significantly higher costs of proceeding separately in each country.
Whichever option you choose, you will still
need to satisfy the national requirements in
each country before a patent is granted in
that country.
It is a matter of balancing the costs of patent protection in particular markets with your
business strategies for those markets. See
http://www.ipaustralia.gov.au/patents/international_index.shtml
Trade Marking overseas
When applying for overseas trade mark
protection, you have two choices:
- apply separately to each country
- apply under the Madrid Protocol which in
many cases provides a simpler, more cost
effective option.
The Madrid Protocol simplifies the procedure for the international registration of trade marks. Effectively, the ‘Protocol’ enables anyone who is based in one of the member countries (there are currently over 60 members) and who has a trade mark in that country, to apply for a trade mark in any or all of the other member countries. Other Protocol countries can be added after international registration. Each
country examines the international registration
in accordance with its own laws. Other benefits
of the Madrid process include a guaranteed
period of either 12 or 18 months for overseas
trade mark offices to issue provisional refusal of
your trade mark, and the ability to renew your
trade mark or record any changes which may
affect your international trade mark registration
in a single request.
Where a country is not a member of the Madrid Protocol an application for trade mark registration must be filed direct to that country.
Refer to http://www.ipaustralia.gov.au/trademarks/intern
ational_background.shtml for details.
Protecting your Design overseas
Australia is a signatory to international treaties
governing industrial designs. To ensure your
Australian and overseas applications are concurrent, you must lodge the convention application in Australia within 6 months of your first overseas lodgement. See http://www.ipaustralia.gov.au/designs/internati
onal_index.shtml
Different markets require different IP strategies
In many cases your overseas target markets will be member countries of IP treaties and conventions. Consider the costs, the possibility of infringement and the likelihood of successful enforcement of your IP rights before incurring the costs of protection.
Consult a patent or trade mark attorney about
the prevailing circumstances in your chosen
markets and use that information to determine
your international IP strategy.
Who can help?
Refer to IP Australia’s website
www.ipaustralia.gov.au for further details
and/or refer to the World Intellectual Property
Organization (WIPO) website, www.wipo.org for the WIPO Guide to
International Registration. Your patent and
trade mark attorney can provide you with
detailed advice and could assist you to tailor an
international IP strategy to match your market
potential and your resources.
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