IP and exporting
If you want to trade overseas or sell to foreign customers, including via the internet, you should consider seeking IP protection in the countries you plan to trade in.
Before you start, you should develop an international IP strategy that suits your identified markets, business goals and resources.
There are agreements in place which make it easier to get IP rights internationally. In many cases your overseas target markets will be members of IP treaties and conventions.
International IP can be complex with costly consequences if it is not handled correctly. It is wise to contact an IP professional in Australia before committing to any exportation of goods and/or services.
Important considerations when exporting
- Identify your major foreign markets
- Search the IP databases in your major markets before filing any applications.
- Most IP offices around the world have free online trade mark, patent and design databases. You can engage an IP professional to conduct a comprehensive search on your behalf.
- You can file applications in each of your major foreign market countries directly, or seek protection in several countries through one application.
- If you file an application for a trade mark, patent or design in Australia, you should think about filing your foreign applications within 12 months (for patents) and six months (for trade marks and designs). This may allow you to use your earlier Australian application priority date.
The Paris Convention allows overseas protection in a large number of countries to be back dated to your original Australian filing date.
Knowing whether your intellectual property (IP) can be used and protected in another country is an important part of your commercial considerations. You don't want to spend time and money developing and protecting IP if it turns out that it is already registered in one of your major foreign markets.
If you are seeking patent protection in Australia and other countries it is important to know that there is no such thing as a 'worldwide patent'. An Australian patent provides protection only within Australia.
To obtain similar protection in other countries you generally have two choices:
- Make a separate patent application in each country. This can be cost effective when you only want protection in a few countries.
- 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 for a patent in a number of countries at the same time, including Australia. It enables you to file a single international application that has the same effect as filing a separate application in each country involved in the treaty. We are a receiving office and can accept PCT applications.
When applying for overseas trade mark protection, you have two choices:
- Apply separately to each country
- Apply under a system called the Madrid Protocol which, in many cases, provides a simpler and more cost effective option.
The Madrid Protocol provides a simplified process for international registration of trade marks.
The main advantage of using the Protocol is that by lodging one application and paying one set of fees, you save the time and effort required to file separate applications in each country.
We accept applications filed under the Madrid Protocol.
Where a country is not a member of the Madrid Protocol, an application for trade mark registration must be filed with that country directly.
In most cases, design applications will have to be filed in your countries of interest directly. There are some differences in the legal requirements and terms of protection for designs around the world. We recommend you seek advice from an IP professional before you file overseas. In some countries, unregistered designs can be protected without the need for registration.
If you do decide to export goods or services, we recommend you contact an IP professional.
- Visit business.gov.au for key information when you’re looking to expand your business overseas
- Austrade provides information, advice and services to assist with trading overseas
- Export Council of Australia is the peak Industry body for exporting
- Search on WIPO Lex for IP national laws and treaties
Last Updated: 15/9/2015