IPRIMA - Intellectual Property Specialists

It is not just dogs and bears which are territorial. Most forms of Intellectual Property are also territorial – in this context meaning that separate rights exist or must be established in each territory, i.e. country or region.

Using patents as an example, a separate application must ultimately be filed in each country where protection is required. The same is largely true for design registrations, trade marks, and plant variety rights. To simplify the process, Europe generally allows regional phase applications to be filed for most forms of Intellectual Property though may ultimately require establishment in individual national offices (who will extract fees in the form of renewals). The Patent Co-operation Treaty (PCT) allows for an applicant to proceed to a single application nominating around a hundred countries, though is still an intermediate stage requiring eventual division into individual national applications in each country of interest.

There are some benefits with the international PCT route. The PCT international phase includes an international search (to supplement other searching) and optionally an examiner's written report. This can provide valuable feedback about the patentability of your invention, and the patent claims currently on file.

More importantly (for many) is the fact that the PCT route extends the deadline by which you have to file in individual countries in territories. Without the PCT, this period is 12 months (for most countries). Proceeding via the PCT route then this period may be as much as 30-31 months for the majority of countries. This is valuable time for gaining and organising licensing, distributorship, and marketing feedback for potential countries of interest. This makes for a sounder, commercial based decision to be made on where patent applications should be pursued. The later deadline also means investment, or revenue from income, are more likely to be obtained

Of importance to IP owners considering future applications in foreign countries, is the ability to initially file your IP applications in your home country or country of residency (depending on local requirements). This provisionally provides protection to you covering most countries of the world. If you continue and file corresponding applications overseas within a predesignated time limit, you will be entitled to the original filing date of that first application. This avoids the need to file in all foreign countries of interest at the outset, but rather within an extended time frame. For patents the designated time limit is 12 months, reduced to 6 months for trade marks and design registrations. If options such as the PCT are undertaken for patents, the time for filing in individual countries or regions can be extended to 30 months (sometimes 31 months) from the initial filing, though a PCT application must be filed within the 12 month time frame.

A number of filing strategies are available for obtaining overseas IP protection. This may include combining or selecting different types of IP protection for certain markets. Establishing licences or assigning rights for different countries may also form part of a strategy. Ideally your attorney will work with you to ensure that a strategy is adopted that meet your current and projected business requirements.