Protecting intellectual property overseas

If an individual or business owns the intellectual property (IP) rights over something they've created, it provides them with exclusive rights to use, sell and transfer them. However, with foreign trade increasing, many small UK businesses export their goods and services overseas which raises issues with intellectual property rights in foreign countries.

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What is intellectual property?

Businesses all create and use intellectual property (IP). This could be in the form of a trade mark, patent, design, copyright, trade secret or valuable confidential information. The value of IP can be significantly more than any physical asset. Therefore, it's important that businesses ensure that they can use, protect and enforce any IP rights they own.

Where are my IP rights protected?

IP rights are territorial and only give protection in the country where they were granted or registered. Therefore, if you only have UK protection, other people in foreign countries may be allowed to use your IP without infringing your rights.

If you are considering doing business overseas or have already started trading with foreign countries, then you should consider registering your IP rights abroad in order to protect your business in the markets and countries you want to trade in.

Protecting your IP overseas

Protecting your IP rights in the UK is fairly straightforward, however trying to enforce your IP rights abroad is more difficult. Some countries may be signatories to international intellectual property treaties and agreements and each type of intellectual property may be regulated differently.

Trade marks

If you want to protect a trade mark in a foreign country, you should apply to the trade mark office in each country you want to do business in. There is also a European and international application system.

Countries that have signed up to 'The Madrid Protocol' allows individuals or businesses from other countries to register their trade mark. An international application must be based on an existing trade mark application or registration. Therefore, you must already have a UK trade mark or be in the process of registering your UK trade mark before you can apply for an international one. For further information, read International trade marks.

The EU system allows for a registration of a trade mark at the European Intellectual Property Office (EUIPO).

Patents

A UK patent provides a monopoly over a unique invention or process. If granted, it can stop other from making, selling or using your invention in the UK. However it will not stop others from replicating your invention or process abroad.

To protect your patent in Europe, you can apply through the European Patent Office (EPO). Your application will be processed as a single application, but once granted it will become separate patents in the countries you choose. You can apply for protection in individual countries in Europe by applying to the national patent office in each country. This is better if you only want protection in a few countries. The World Intellectual Property Organisation (WIPO) has a directory of all the Intellectual Property Offices internationally.

You can protect your patent in many international countries through the Patent Cooperation Treaty (PCT). A PCT application is processed as a single application and you'll receive an international search report and written opinion. You'll then have to process your application separately in each country. You can register your patent with the UK IPO, EPO, or directly to the WIPO who administer the PCT.

However, due to the complexity and nature of patent applications, it's best to Ask a lawyer.

Designs

As with any IP right, registering your design in the UK does not grant protection abroad. If you want to register your design in other countries, you can either:

  • apply for a Registered Community Design (RCD) covering the whole of the EU;
  • apply directly to the IP offices of most major countries around the world. You can use the WIPO Directory to find the country and corresponding office; or
  • apply using the Hague System where you can apply to a number of different countries or territories at the same time, using only one application.

If you have an unregistered design right, you may still be able to get protection. For example, using the Unregistered Community Design right which covers the entire EU.

When you want to protect your design right in EU countries, you should apply for a RCD through the EUIPO. You can fill in an application form on the EUIPO website or print the form and fill it out by hand.

It's important to remember that although anyone can file a registered community design application at the EUIPO, only a professional with full legal qualifications can act in proceedings before the EUIPO.

Copyright

Copyright protection works in the same way abroad as it does in the UK. The UK is a member of several international conventions and treaties including:

  • The Berne Convention for the Protection of Literary and Artistic Works
  • The Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations
  • The World Intellectual Property Organisation (WIPO) Performances and Phonograms Treaty (WPPT)
  • The WIPO Copyright Treaty (WCT)
  • The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

If a piece of copyrighted work created by a UK national or resident falls within the scope of one of these treaties, then the piece of work will automatically be protected in each country that has signed up to these conventions and treaties.

The Berne Convention will allow your work to receive automatic copyright protection internationally. You can mark your work with the international '©' symbol, followed by the name of the copyright owner and the year in which the work was created. This is called 'attribution'.

What happens when you assign or licence IP rights to someone abroad?

Assigning or licensing IP abroad means you are transferring or allowing someone else to use your IP rights for their business or trade. However as IP rights are territorial, it means that the the person who is going to use the IP rights abroad will not be protected from infringing parties in that country. The same is for when UK nationals or residents receive an assignment or licence of IP from an international or overseas business; you will not be protected unless it is registered in the UK.

The only exception to this is if it is a copyrighted work and it falls under one of the treaties or conventions, where it will receive automatic protection.

UK overseas intellectual property attaché network

If you're thinking of doing business in South East Asia, China, Brazil or India, there is free help and advice available through the IPO's IP attaché network. They work with local UK businesses and individuals and are based in their representative countries. Their services are free and you can find their contact details on the Gov.UK website.

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