If you want to expand your business and trade overseas or sell to foreign customers via the Internet, you should seriously consider seeking IP protection in the countries where you plan to trade.
IP Australia offers the following tips for exporters to help you protect your intellectual property (IP) overseas:
1. Search IP databases in your major markets before filing any applications
Many IP offices have online trademark, patent and design databases that you can search for free. You can also get help from an IP attorney to conduct a search on your behalf.
Knowing whether your IP can be used and protected in another country is an important part of your strategy. You don't want to spend money developing and protecting IP if it turns out that it is already registered in one of your major foreign markets. Similarly you don't want to export to a country where you may infringe someone's IP. This can be an issue when you sell over the Internet.
2. Decide whether to file your IP applications in countries directly or make use of an international agreement
International agreements allow you to seek protection in several countries through one application.
The Madrid Protocol provides a simplified process for international registration of trademarks. The Protocol enables the owner of a trademark in a member country to apply for a trade mark in any or all of the other member countries. Each country examines the registration in accordance with its own laws.
The Patent Cooperation Treaty (PCT) is a streamlined way of filing a patent in a number of countries at the same time.
The main advantage of using these international agreements is that by lodging one application and paying one set of fees, you save the time and effort required to file separate applications in each country.
If you want to file your Australian application for a patent, trade mark or design overseas and claim the Australian filing date then under the Paris Convention you may be able to do this. There are time limits involved in making the claim, within 12 months for patents and 6 months for trademarks and designs.
3. Be aware of the different legal requirements in each country
There are some differences between countries in the legal requirements for obtaining IP rights, so be aware that your patent, trade mark or design may not qualify for protection in all of your markets of interest.
It's best to seek help from an IP professional who is experienced IP law and trade to advise on local IP, customs and other laws regulating imports and trade in that country. An Australia IP attorney can facilitate such contact.
4. Be aware that you may have to translate you application.
If English is not the official language of an IP office you may have to translate all documents and correspondence into the official language used by that office. An Australian patent or trade mark attorney should be able to assist you on such matters.
5. Get professional help
Patent and trademark attorneys can provide you with detailed advice and can help tailor an international IP strategy to match your market potential and your resources.
Some countries require that you to have a residential or business address in their country, otherwise applications must be filed through a local attorney. An Australian IP professional can facilitate such contact.
IP Australia is the Australian Government agency that administers intellectual property (IP) rights and legislation relating to patents, trade marks, designs and plant breeder's rights.
For more information visit IP Australia’s doing business overseas page.