Protecting your intellectual property rights overseas

Key International IP Agreements & Treaties

1.      The ‘Paris Convention’: Protecting core IP rights internationally

The ‘Paris Convention’ (established in 1883) is one of the oldest international treaties relating to IP, primarily focusing on the protection of trade marks, patents and designs (but not copyright). Each member country to the Paris Convention (170 in total) must extend the same IP protections it provides to its own nationals to foreign applicants (as they would their own citizens).

More pertinently, any applicant that submits an application for a trade mark, patent or design in one member country, may claim the same filing date in other member countries if filed within six months of the earlier application (for trade marks and industrial designs) or 12 months of the earlier application (for patents and utility models).  

Practically speaking, this priority period allows phased expansion internationally and affords a right of “priority” over a later application for the same right submitted by a third party.  

2.      Trade marks: the ‘Madrid Protocol’ & ‘European Trade Mark System’

The UK is a signatory to the ‘Madrid Protocol’, an international agreement that is administered by the World Intellectual Property Organisation (‘WIPO’), which offers a convenient and cost-effective solution for registering a trade mark internationally (in up to 131 countries).  

In essence, the Madrid Protocol enables applicants to register their trade marks internationally using a single application submitted via the WIPO. Applications are based on an existing ‘base right’ (often a UK trade mark application or registrations but also potentially an overseas right), which is why it is important to register your trade mark in the UK (or be in the process of doing so) first.

Once the application has been initially examined by the WIPO it will be sent to the international registry (for example, the United States Patent and Trademark Office) for substantive examination in accordance with local laws.  Some registries are quicker to examine than others, but in most cases this process will be complete within 12-18 months of the application. Assuming that no objections are raised (i.e. due to earlier trade marks) a statement of grant of protection will be issued and the trade mark will be protected in the territory.

One of the main benefits of the Madrid Protocol is that you can, via one application, apply for registration in all or some of the contracting parties. Historically, the traditional approach to obtaining trade mark registration overseas would be to apply for protection in each country, a costly and time-consuming process! A further benefit is that you can extend your protection via a ‘subsequent designation’, which in essence is a bolt on territory to your application.

Finally, you are able to renew, modify or expand trade mark protection across member countries through a single centralised process that is administered by the WIPO (saving time and administrative effort).

3.      Designs: The ‘Hague System’

A UK registered design does not grant you automatic protection of that design overseas. If you’d like to register your design internationally, you can use the ‘Hague System’ (also managed by WIPO), which facilitates protection across a number of member countries with one application.

Under the Hague System, an applicant does not require an existing UK design application or registration; however, it’s possible to claim priority from an earlier application filed at a national office. Your application will be examined by WIPO, who ensure that it meets formal requirements and notify you of any irregularities. After examination, WIPO will forward your application to the national IP office of the designated countries you’re seeking protection within. The national IP office will then decide if your design is acceptable for registration in their territory. As with trade marks, your design may be objected to by the relevant registry but, if successful, protection will be afforded in the territory.

The main benefit of the Hague System is the reduced costs and administrative expense when compared with submitting direct applications.

4.      Patents: The ‘Patent Co-operation Treaty’ and ‘European Patent Office’

A patent in the UK grants an exclusive right and monopoly to a novel invention, preventing others from making, selling or using your invention in the UK. However, a UK patent has no influence elsewhere and does not prevent use of it overseas.

If you plan to sell or license your invention abroad, you should consider patent protection in each territory. There are several options for obtaining such protection, one way could be to file a patent application in each country you wish to obtain protection (which may be attractive if you only require protection in certain jurisdictions). Alternatively, you can seek to file a regional patient application, which allows you to obtain patent protection in a number of countries.

One way of doing so is by submitting an application via the Patent Co-operation Treaty (‘PCT’), an international treaty which was concluded in 1970, and which is again administered by the WIPO. Despite this, this does not cover all countries worldwide. Alternatively, you can also choose to protect your patent for Europe-wide protection, via an application to the European Patent Office (‘EPO’). Whilst the UK is no longer part of the EU, a European patent application is still attractive for those seeking protection in Europe, as the EPO is not administered by the EU.

Centralised applications generally offer a more cost-effective and efficient means of securing patent protection across multiple jurisdictions through one single application, whilst allowing you to decide on which territories you wish to be the subject of that application.

How can we assist?

Understanding the international IP systems can help you formulate and take steps in protecting your brand and IP rights internationally. Each system provides ‘tools’ and streamlines the process of protection across multiple countries and jurisdictions. If you and your business are considering engaging in business overseas and need assistance or advice with registering your UK IP rights internationally, please get in touch on the form below.