IP and Brexit
What will happen to intellectual property rights when the UK leaves the EU?
Whilst seeking protection for your intellectual property rights overseas can be costly, not doing so can be even more so. Valuable rights and markets are easily lost. Trying to recover your rights is far more costly than protecting yourself in the first place.
In an increasingly globalised economy key markets are overseas. Competition is overseas – even your own manufacturer or distributor. Without adequate intellectual property protection overseas your business may suffer. If a third party or your distributor registers your trade mark, or an overseas supplier that developed a product for you obtains patent or design protection, this could lock your business out of key markets.
Whilst obtaining intellectual property rights overseas is clearly desirable, as with any business decision, the benefits need to be weighed against the costs. Seeking protection in a handful of countries in addition to the UK can significantly increase the costs involved. To maximise value for money it is important to consider when and where to seek protection overseas.
As a first point, intellectual property rights are territorial which means that ultimately, if you want protection in a country (or in some limited cases region), an application will have to be made in that country or region. There are mechanisms to delay filing applications in each of the territories of interest, but you will have to file in each territory in which you want the rights at some stage.
Patents and Designs
To obtain valid patent or registered design protection overseas an initial application must be filed before any non-confidential disclosure of the invention or design it is desired to protect. For UK businesses and individuals this initial application is usually made in the UK. Details of the invention or design can then be made available to the public and there is a period of twelve months (for patents) and six months (for designs) in which applications can be filed overseas which are then treated as having been made when the initial application was made. Thus, a decision on overseas protection needs to be made at a relatively early stage for patents and designs, before there is any public disclosure of the invention or design.
For patents, the international and European patent application systems enable the relatively high cost of seeking overseas patents to be delayed somewhat. The associated business thus has the opportunity to develop before a decision need be made. Our IP Basics articles How do I seek patent protection globally? and How do I seek design protection globally? provide further information about this process.
Whilst trade mark registration operates on a first to file basis in most countries, so that early application dates are advantageous, applications for trade mark protection can be made at any time. Because, unlike patents and designs, there is no specific decision point for seeking overseas trade mark protection, it is something which is often neglected. Steps should be taken to ascertain if a mark is available for use or registration, and to seek protection, before entering a new market. A regular review should be made of trade mark protection to ensure that you have the trade marks of interest protected in relation to the goods and services of interest in the territories of interest.
Our IP Basics article How do I protect my trade mark globally? offers further information about the process of seeking trade mark protection overseas.
Please contact us if you would like to arrange an audit of your existing trade mark portfolio.
As a first priority protection should be sought in countries or regions that are your markets. It is in there that you will lose revenue as a result of infringing competition.
After your markets, you should consider seeking protection in territories where you manufacture, territories where key competitors are located and potential markets.
In some industries it is possible to satisfactorily protect yourself by seeking intellectual property rights in a limited number of key territories. In an industry where it is difficult or impossible for a competitor to relocate obtaining protection in the territory where the competitor manufactures could effectively keep that competitor out of all markets. Where a standard product is sold across many markets obtaining protection in one or two of those markets may be sufficient to prevent competitors entering the market at all. For example, a patent for automotive technology in Germany is very likely to be effective in preventing competitors from incorporating that technology into any vehicle sold in the EU.
If you would like to discuss your intellectual property protection overseas, please get in touch to speak to one of our attorneys.