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Why Should Your
SME Protect its IP Abroad?
Sooner
or later, many small and medium-sized enterprises (SMEs) operate in more than
one market selling their products or services or licensing/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 (see "How
can Intellectual Property Enhance the Export Opportunities of Your SME?").
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When Should
Your SME Protect its IP Abroad?
As a
general recommendation, your SME 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.
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How Can Your SME
Protect its IP Abroad?
National
Applications
One
option is to seek protection in individual countries separately by applying
directly to
national IP office. 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.
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Regional Applications
Some
countries have established regional agreements for obtaining IP protection for
an entire region with a single application. The regional IP offices include:
European Patent Office (for European
patents)
Office for Harmonization in the Internal Market
(for European Community trademarks and, in the
future, industrial designs)
African Regional Industrial Property Office
(ARIPO, the regional IP office for English-speaking Africa for patents,
trademarks and industrial designs)
African Intellectual Property Office (OAPI,
the regional IP office for French-speaking Africa for patents, trademarks,
industrial designs and, in the future, geographical indications and
layout-designs of integrated circuits)
Eurasian Patent Office (for patent
protection in countries of the Community of Independent States)
Benelux Trademark Office
& Benelux Designs Office
(for trademark and industrial design protection in Belgium, the Netherlands
and Luxembourg)
Patent Office of the Cooperation Council for the Arab States of the Gulf
(for patents) |
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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 SME 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.
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. |
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