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International IP Protection Strategies

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International IP Protection Strategies

It is unusual for a new product or technical innovation to be marketable in a single national economy. It is far more likely, especially in the age of the global economy, that a product or innovation has a much wider international market.

If commercialisation outside your home economy is what you intend for your product or innovation, then you need to take appropriate steps to ensure that the appropriate IP protection in the relevant jurisdictions.

The more jurisdictions, the more expensive protection becomes, so one usually has to prioritise countries to cover a sufficient part portion of the market. More often than not, the main markets for the product/innovation in question are a first priority for obtaining patent protection, but you may also wish to consider obtaining protection specifically in those countries where your competitors manufacture.

Various legal structures exist for extending national/regional IP rights to multiple jurisdictions such as the Madrid Protocol (for international trademark protection). For patent protection, the Paris Convention and the Patent Cooperation Treaty (PCT) provide frameworks which can assist in filing strategies, and cost considerations. The Paris Convention allows first patent filings (priority filing) to be extended to other jurisdictions by subsequent filings within one year of the first filing. In some jurisdictions a priority may be obtainable at little cost and provides a further year in which decisions regarding further costs can be made.

The PCT provides international patent applicants with a procedure which offers a degree of harmonisation in a global patent filing procedure. The international phase of the PCT does not result in an international patent (which does not exist) and national/regional applications must still be subsequently filed. Although, in one sense, the PCT international phase represents an additional non-essential phase in the patent application procedure (which entails also additional costs), there can be considerable benefits to adopting the PCT route, rather than by making several independent national filings.

By filing an international application under the PCT, applicants can obtain patentability opinions from leading patent offices in the PCT system, which, although non-binding on other patent offices, may nevertheless be highly persuasive in some cases. The first benefit of the PCT is that the applicant will, having completed the international phase, be better informed about the patentability merits of the application, before entering the national phase. As a consequence, he may amend the application when entering the national/regional phase, or even abandon the application altogether. Secondly, the PCT represents a way of managing risk associated with the application: by adding an international phase, the applicant delays the time-to-grant and in that time has the opportunity to understand more about the invention, the product market and commercialisation. By obtaining this enhanced flexibility the whole application strategy may be better honed, with different aspects stressed or divide out, in order to achieve patent legal and commercial objectives.

It is important to understand the potential advantages and disadvantages of different filing strategies, their impact on the likely outcome and on costs.

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