Sights set overseas?

If you are looking to expand your business overseas, do you know what steps should you be taking to ensure your intellectual property is protected? Whilst seeking protection for your intellectual property overseas may appear expensive, not doing so can prove costly in the long run.

Without adequate overseas intellectual property protection your business may suffer. If a third party or distributor registers your trade mark, or an overseas supplier that developed a product for you obtains patent or design protection, you could find your company involved in expensive legal disputes or is even locked out of key business markets.

Once you have applied for intellectual property protection in a territory, such as the country in which your company is based, you may lose valuable rights in other markets if you do not apply for corresponding protection overseas within specific timeframes.

In this article, we outline some of basic points you need to take into consideration to ensure your intellectual property is suitably protected.

Where should you seek protection?

In an increasingly globalised world, it can be hard to know where to seek intellectual property protection.

As a first priority, protection should obviously be sought in your key markets.

Great care then needs to be taken in considering which countries to seek protection in. You need to consider whether you want to seek protection in territories where you manufacture; territories where key competitors are located; and potential future markets. In some industries you may only need protection in a few key territories to compete effectively and prevent others from successfully entering the market.

How to obtain protection


To obtain valid patent protection for an invention in almost all overseas territories, an initial application must be filed before any non-confidential disclosure of the invention e.g. for UK businesses this would normally be a UK patent application. You then have a 12 month “priority” period during which applications can be filed in other territories that are of interest. These later filed, priority claiming, applications will be treated as having been made on the same date as the initial application.

Depending on the number of territories you are seeking protection in, you may wish to take advantage of international agreements which can make the process of applying for patent protection abroad simpler and more cost effective.

For example, the international Patent Co-operation Treaty (PCT) system enables you to delay the filing of overseas applications in over 150 countries for a further 18 months after the filing of an initial priority application. This gives businesses up to 30 months, from the filing of an initial patent application to decide where they wish to pursue patent protection. The use of the international system also delays the relatively high costs of filing applications in those overseas territories where patent protection is to be pursued.

Not all countries are signed up to the international system, so it is important to check that everywhere you wish to seek protection is a member of the system.

The European Patent Convention (EPC) allows the filing of a single patent application in respect of 38 countries, which includes all 28 member states of the EU as well as 10 additional countries. Once granted the application becomes a series of patents in the countries concerned, and in the future would include a Unitary European Patent as well as national patents for those countries not signed up to the Unitary Patent.

It is advisable to consider at an early stage whether you require overseas patent protection so that you can plan accordingly and hence make the most use of the priority protection period, the international system and the European Patent Convention.

Registered Designs

Once an initial registered design application has been made to protect the appearance of a product, you have a 6 month “priority” period to file priority claiming applications overseas. Priority claiming applications are treated as having been made on the same date as the initial application.

Similarly to patents, there are a number of international arrangements to facilitate the process of applying for protection abroad.

For example, Registered Community Designs (RCDs) in the European Union provide a cost effective way to obtain and maintain design registrations in all the member states of the EU, rather than through separate design registrations in individual countries.

The Hague Agreement, covers 60 jurisdictions internationally, and allows design protection to be obtained in multiple countries on the basis of a single application.

As with patents, you should consider at an early stage whether you require overseas protection in order to ensure that you make the most of your priority period; and to ensure that you do not run into problems in respect of later filed applications not being valid due to the earlier disclosure of the design that you wish to protect.

Trade Marks

Unlike patents and designs, you can apply for a trade mark overseas at any time, because for trade mark protection, it is not necessary for your brand or logo to be new on filing. Instead, registrations are usually granted on a first to file basis, however, it is advisable to use the 6 month “priority” period after you initially apply for a trade mark in a first territory, say the UK or EU, to file priority claiming trade mark applications in other countries where protection is required.

In some territories (notably the USA, in some circumstances) it is necessary to confirm that a trade mark is being used in that territory before a registration can be granted. Once registered, it may also be necessary for you to provide evidence that a registered trade mark is being used in order to maintain a registration.

Before launching your company or product abroad under your trade mark, or seeking protection in a new market, you should arrange searches to check if a mark is available for use or registration. It is also important to do your due diligence to check your mark is not going to cause offence or be misunderstood in the context of a different culture.

Working with third parties

If you are working with a third party overseas, it may be important to ensure that you have already sought intellectual property protection in that territory or have clear legal agreements in place to prevent them (or others) from utilising your brand, product or processes without your permission.

Wilson Gunn can assist in helping you to prepare a strategy for overseas intellectual property protection. We file applications in the UK, Europe and internationally and have an established and reliable network of overseas associates. If you would like further advice, please get in touch with one of our attorneys today.

Please note this article is for information only and does not constitute legal advice. We would recommend speaking with a professional IP Attorney before making any decisions regarding your intellectual property in the UK or overseas.

© 2018 Wilson Gunn