Protecting your intellectual property when you’re selling overseas [Updated: Nov 2021]
Understanding the intellectual property (IP) environment of your target market and protecting your IP is a crucial part of your export journey. Copyright, patent and trademark law differs significantly from one country to the next, and rules and processes can be complex.
Whether you need to secure a patent for your invention or just make sure you’re not infringing on someone else’s intellectual property when you start selling overseas, our guide will help you get started.
There are different types of IP protection including copyright, patents and trademarks. Copyright law relates to authorship, patent law protects inventions, and trademark law protects logos and other recognizable marks. While copyright usually applies automatically when a literary or artistic work is created, you need to apply for other IP protection like patents and trademarks.
When an IP office grants you a patent, it gives you the right to exclude others from making your product, and gives you some assurance that another company won’t try to claim the product as its own. Generally, an invention needs to be of practical use and show an element of novelty to be granted a patent, and it must also be “patentable” under the country’s law. Most countries deem certain things un-patentable, such as natural substances and scientific theories.
Protecting your IP should help you deal with companies that try to copy your product’s design or features. IP rights can also bolster your negotiating position when you’re in talks with other companies to produce, market or distribute your products. As patent owner, you have the right to decide who can use your patented invention, and you can license other parties to use it.
It’s important to understand that IP rights are territorial. This means that any patents or other protections you’ve been granted in your domestic market won’t apply when you take your products overseas, unless you have a regional patent that’s valid in your export market (more on this below).
Bear in mind that IP considerations can affect other elements of your export planning and budgeting. For example, your product pricing might be partly determined by how much your brand is recognized, and investors and banks might check if your IP is protected before investing in your business.
Even if you don’t think you need to protect your IP by applying for a patent in your target market, you still need to make sure you’re not infringing on someone else’s intellectual property. Remember that features of your product that are protected by a patent you hold at home (or brand marks that are protected by your trademark) may belong to someone else in your export market. You could face severe repercussions if you infringe on another company’s IP, so always do your homework before you start exporting.
Once you’ve filed your initial patent application in your home country, you usually have a “priority period” of 12 months. For trademarks and industrial designs, the priority period is usually six months.
During this period, you can gain protection in another country and connect this with your earlier application. This effectively prevents anyone else from getting IP protection for the same invention or design anywhere else during this period.
If you miss the priority period, you might not be able to gain protection in other countries, although there are certain exceptions and extensions.
A patent is granted by a national patent office or by a regional patent office. The World Intellectual Property Organization (WIPO) provides a directory of regional and national IP offices so that you can contact them directly.
It’s also worth checking if your country’s own office publishes information about IP overseas. The U.K. government, for example, provides tailored IP information about key markets including Brazil, China and India, and the U.S. office produces an annual Special 301 Report on IP protection and enforcement around the world.
Regional IP offices like the European Patent Office (EPO) and the African Regional Intellectual Property Organization (ARIPO) work on behalf of several countries. If you apply to a regional patent office, you can request protection in multiple countries in that region, and each country can decide whether to grant the patent in their jurisdiction.
If you’re keen to protect your invention in several countries that aren’t covered by a regional patent office, you can either file separate patent applications in the countries where you’re seeking protection, or you can file an application under the Patent Cooperation Treaty (PCT). The PCT route means you can file a single “international” patent application, although the granting of individual patents is still under the control of each national patent office.
Protecting and managing IP abroad can be very complex, so it’s a good idea to seek advice from an IP attorney or another expert. Your government’s office may also have IP attachés who can advise you on intellectual property issues abroad.
- Make sure that you’re not falling foul of your own country’s legislation when you’re applying for protection overseas. If your invention was created in the United States, U.S. law says that you have to get a foreign filing license from the U.S. Patent and Trademark Office before filing for a patent overseas, unless at least six months has passed since you filed your U.S. application
- IP law and filing processes vary from one country to the next, so don’t assume that the same rules apply in your target market. For example, while copyright protection may be enough to protect your design at home, you may need to seek industrial design protection in your export market. This is why it’s important to thoroughly research the IP climate in your target country.
- Remember to check whether a trademark that you use has already been registered in the export market, as this could lead to trademark infringement issues. You can use the WIPO’s global brand database to do a trademark search of multiple international sources. Also check that any name, logo or design you’re using isn’t offensive or inappropriate in your export market’s culture.
- Find out if you could save money and time by using a regional or international system to apply for IP protection in multiple countries. As well as the PCT system for patents, there’s also the Madrid System for worldwide trademark protection and the Hague System for the International Registration of Industrial Designs. You can file a single application to register a design in several countries.
- Be careful about sharing information on your products with potential partners or distributors without a confidentiality or non-disclosure agreement (NDA). This could lead to you losing the rights over your invention or design because someone else applies for patent protection before you, or your product is deemed un-patentable because it’s no longer considered new. You can find NDA examples and templates online, including on the UK government’s website.
- Make sure that you protect your IP rights when you’re outsourcing manufacturing. Countries have different laws relating to contracted work and IP rights, so it’s important to find out about the legislation in your export market and to add explicit clauses relating to IP ownership to the contract