Protecting Intellectual Assets Abroad

World Intellectual Property Organization ("WIPO") Geneva

Author Emmanuel Berrod  Licence CC BY-SA 4.0  Source  flicker

 

Jane Lambert

Whenever an inventor applies for a British patent, he or she makes a bargain with the British public.  In return for disclosing "the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" the inventor is granted a monopoly of the the invention  in the United Kingdom for up to 20 years.   Folks outside the United Kingdom are not privy to that agreement so unless the inventor applies for patents elsewhere, there is nothing to stop a competitor from making, selling  or using the invention overseas.

As other countries' patent laws require the invention to be new at the time of the application, inventors had to apply for patents simultaneously to the intellectual property offices of all the countries in which they sought patent protection.  As can be imagined, that could be expensive and complicated.  The financial and administrative burden was mitigated by the Paris Convention for the Protection of Industrial Property which allowed applicants to backdate their applications to the date of their first application provided they filed their second and subsequent applications within a year of the first application.  That is known as a "right of priority" which is granted by art 4 of the Convention.

Having 12 months in which to file foreign patent applications certainly made life easier for applicants but they still had to make separate applications to each intellectual property office.  On 17 Oct 1977, the European Patent Convention ("EPC") came into force.   The EPC established the European Patent Office ("EPO") which grants patents known as "European patents" for the territories of the governments that are party to that Convention.   Despite their name, European patents are not patents for the whole continent or even the European Union.  They are granted for designated contracting states 

on behalf of the governments of those states.  A European patent designating the UK is known as a European patent (UK) and is treated for almost all practical purposes as if it had been granted by the Intellectual Property Office.in Newport.  The great advantage of applying to the EPO is that applications can be made simultaneously for European patents for up to 39 states from a single filing.  

On 1 June 1978, the Patent Cooperation Treaty ("PCT") came into force.   That Treaty enables patent applications to be made simultaneously to up to 156  states from a single filing.   Applications can be made directly or indirectly to the World Intellectual Property Organization ("WIPO") which is the UN specialist agency for intellectual property.  If requested, the WIPO will carry out an international preliminary examination which will examine the invention for novelty, inventiveness and utility.  If the examination is favourable the applicant can ask for the application to be forwarded to the national intellectual property offices for further consideration.   More information on the EPO and PCT is offered by the IPO in Protecting Your Patent Abroad which was last updated on 1 July 2022.

Art 4 of the Paris Convention confers a 6-month right of priority from the date of the first application upon applicants for trade marks and registered designs.  While the UK was in the European Union, applicants had the choice of applying to national intellectual property offices for the registration of national trade marks or designs or to the European Union Intellectual Property Office ("EUIPO") for the registration of European Union trade marks or registered Community designs which applied to the UK and the other 27 member states of the EU. Since 31 Dec 2020 EU trade marks and registered Community designs have continued to apply to the remaining 27 member states but not here.  Accordingly, UK brand or design owners can still apply to the EUIPO for new EU trade mark or RCD registrations.

Just as the PCT enables applications to be made for patents in many countries from a single filing the Madrid Protocol facilitates multiple trade mark applications from a single filing.   Updated guidance on applications for EU trade marks and the Madrid Protocol is provided by the IPO in Protecting your trade mark abroad.  Similarly, the Hague Agreement permits multiple design registration applications from a single filing.   Details on applications for registered Community designs and under the Hague Agreement are available from the IPO in Protecting your Design Abroad.

Owners of UK copyrights will acquire automatically corresponding local copyrights in countries that are party to the Berne Convention for the Protection of Literary and Artistic Works.  Similarly, owners of rights in performances in the UK will acquire automatically local corresponding rights in countries that are party to the Rome Convention (International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations).   Guidance from the IPO is in Protecting your Copyright Abroad.  

There is no equivalent to unregistered design right in most countries.  In some, however.  designs that are protected by unregistered design rights in the UK may be registered as utility models which are unknown in this country.

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