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Strategies to Secure your Innovations Globally

Updated: Apr 16

International trade opens new commercial opportunities for companies, but there are benefits that go beyond the basic increase in revenue. Intellectual property rights (IPRs) can help to establish or enhance a commercial position, providing an advantage over competitors.  


Examples include securing rights to foreign IP to launch in your home market or launching your IP and establishing first mover advantage in a foreign market before competitors; generating new products via technical or brand collaborations; or monetising your IP better via overseas partners through licensing, franchising, manufacturing, distribution agreements or joint ventures. 



Our first article (found here) described the value, economic importance and nature of IPRs and intangible assets (IAs) in your business. Building upon this, we’ll now look at patent strategies and the benefits of securing such IPRs overseas.  


IPRs - A Refresher 

As explained in our last article, unregistered IPRs typically arise automatically upon the satisfaction of certain criteria such as the creation of a work or the use of a brand (e.g. copyright, database right, unregistered trademarks and unregistered designs), whilst others require registration (e.g. patents, registered designs, registered trade marks) before a national or regional intellectual property office (IPO).  


Registered IPRs that undergo examination for criteria such as novelty and inventiveness (in the case of patents), are typically regarded by investors and partners as more robust than unregistered IPRs. They offer an IA that is easier to trade with and has better legal protection and enforcement capabilities, including the potential to seize infringing goods at customs.  


Nevertheless, before filing for registered IPRs, care should be taken to review prior art/rights and your competitive landscape to ensure that it is the most appropriate route for protection, as they can be challenged after grant.  

  • Trademarks 

  • Designs 

  • Patents 

  • Passing off 

  • Designs 

  • Confidential Information (trade secrets) 

  • Copyright* 

  • Databases 


Examples of registered and unregistered IPRs (*official copyright registries are not available in many countries, meaning separate steps are required, including in the UK, to codify your copyright to prove date of creation). 


Examples of Successful International Collaborations: 

Brands

Lego® and Star Wars® have developed many Star Wars themed Lego sets over the years. These are protected by registered trademarks, for the product names and logos; copyright, for the instruction manuals and packaging; and registered designs and design patents (USA) for the visual appearance of their products, for example. Lego also owns a large patent portfolio for its technical innovations.  


Technical

Pfizer® and BioNTech® collaborated to expedite development and roll out of the COVID-19 mRNA vaccine. Their joint efforts led to numerous patents related to mRNA technology and vaccine development.


What steps should I consider before seeking IPR protection?  

Evaluating your product's development stage, market opportunities, and budgets is recommended alongside determining the most suitable IPRs/jurisdictions for protecting your innovations, designs, and brands. The following steps are advisable before entering foreign markets, incurring costs, or engaging with external partners:  


  • Take steps to identify, capture and manage your IAs, before considering where and when is best to secure registered IPRs (e.g. patents, registered trade marks or registered designs).  

  • Consider whether it is best to file for patent protection

  • n (requiring you to reveal your invention to the public), which may be less suitable than following a trade secret strategy for technologies where secrecy is crucial for staying competitive. 

  • Consider the management of multiple IAs including trade secrets, trade marks, design rights, and domain names. It’s crucial not only to protect innovations via patents, but also to use these wider IPRs to protect your product or service names, logos, packaging, overall appearance, and graphical user interfaces (GUIs) for digital assets.  

  • Consider what steps are needed to align your IP and business strategies. Long term plans will need continual review, and tactics will be determined along the way that influence how and where you decide to protect, monitor and monetise these assets and achieve your overall business goals.  


How do I decide where to secure IP protection?  

First, it should be noted that IPRs are territorial. Just because a business owns IPRs in one country does not mean that it owns and can enforce them everywhere.

Market and IP landscape analysis will guide smart IP filing strategy decisions, influenced by the following factors: 

 

  • Your core markets – where do you expect the majority of your sales to take place? Does the market size warrant IPR protection costs?  

  • Where will your innovative products be manufactured? IPR protection is advised in countries of manufacture to control use and deter copying of your IPRs. 

  • Where are your key distributors located? Besides obtaining patent rights (where appropriate), it's also prudent to seek registered trade marks or have distributor contracts that ensure control or transfer of trade mark ownership.  

  • Where is your IP at greatest risk of being copied and infringed? Loss of business, revenue, reputation and competitive advantage through IP infringement may be mitigated by securing registered IPRs, thus warranting the costs to secure. These not only act as a deterrent to would-be infringers but are also important to have in place should you need to take action to stop infringement and/or seek damages.  

It is too expensive and does not make commercial sense to file for registered IPRs in all countries of the world. Decisions will have to be made on where and what registered IPRs should be secured based on market and IP research an overall business strategies.

International IPR filing strategies  

The UK is a signatory to many key World Intellectual Property Office (WIPO)-administered treaties that can help secure and exploit IPRs internationally and cost-effectively. 


Steps to secure international patent protection.  

As patents are complex and not fully harmonised internationally, it is important to work with a patent professional to avoid errors that could result in the rejection of a patent application, invalidation of a patent later on, or grant of a patent that is not of commercial value.  


Exemplary patent filing route:  

1) Initial Filing: After engaging with a patent attorney to draft your patent specification (ideally following a prior art search), it is common to file a national patent application - typically in your home country - to establish a 'priority date'. If your invention has potential implications for national security, security clearance must be obtained from the UKIPO before filing overseas.  


2) Paris Convention: The Paris Convention allows applicants to file for patent protection in multiple member countries within 12 months of the initial ('priority') application, ensuring their subsequent applications are treated as if filed on the same date as the priority application.  


3) International filing systems: International patent applications under the Patent Cooperation Treaty (PCT) allow a single application to be filed provisionally covering a large number of countries (158 in the PCT at the time of writing). Such systems can delay costs and simplify the initial filing process, whilst you determine commercial opportunities for your invention. 


Whilst you cannot be granted an international PCT patent, you can decide where to secure granted patent rights later by filing national or regional phase (e.g. EPC system below) applications (at 30 or 31 months from your original filing date). The PCT system offers an International Search and optional Preliminary Examination, providing valuable feedback on patentability of the invention before entering the national or regional phase(s). A typical timeline may be found below:  



  • National Patent Application Filed: Typically filed in your home country, this can be used to establish a priority date for subsequent filings  

  • PCT Application Filed: Must be filed within 12 months of the initial filing to claim protection from your national filing date. The PCT system can streamline the process of seeking protection in multiple countries.  

  • International Phase: Your PCT application undergoes an international search. An optional preliminary examination is also available in which you can engage with the international examiner (can be useful in subsequent national/regional phase).  

  • Publication: Your PCT (or national) application will publish typically 18 months after your filing date. NB it can be advisable to maintain confidentiality of your invention until this time.  

  • PCT National/Regional Phase: You must enter the national or regional phase of the PCT application in individual countries or regions where protection is desired within 30 or 31 months from your earliest filing date. Each country determines the deadline for filing a national or regional phase application.  

  • Examination and Grant: Each national or regional patent office examines the application according to its own rules and procedure (although if you have followed the PCT route your international search and examination will be taken into account). If the application meets all requirements, the patent is granted.  

  • Maintenance: Pay maintenance fees in each country to keep the patent in force (note some countries also require payment of such fees whilst the application is pending). 


EPC/Unitary patent  

The European Patent Convention (EPC) is an international treaty. Unlike the EUIPO, which grants EU-wide registered trade marks and designs, the European Patent Office (EPO) can examine and grant patents wider than the EU, extending to thirty nine EPC member states (including EU and non-EU countries such as the UK, Switzerland and Turkey). It can also extend rights to non-member states, including one extension state (Bosnia and Herzegovina) and five validation states (Morocco, Moldova, Tunisia, Cambodia and Georgia).  


Like the PCT system, you have to choose EPC countries in which you wish to validate your granted European patent and to pay fees providing the same effect as a national patent in those countries.  


The UK is an EPC member state and the grant or validation of European patents is not affected by Brexit. UK patent rights, for example, may be achieved via a granted European patent designating the UK, or via a UK national patent.  


After grant of a European patent, instead of validating in individual EPC states, you can request a Unitary Patent to secure rights in participating EU member states. NB this does not include the UK and certain EU countries that have not ratified the UPC.  


The Unitary Patent can provide a streamlined and cost-effective option for obtaining and maintaining patent protection across multiple EU countries. However, as it is subject to the jurisdiction of the Unified Patent Court, in contrast to traditional European patents requiring enforcement through the national courts, it is best discussed with your patent attorney as to which route may be better to follow for patent rights across the EPC. 


Patent strategy examples  

Fortress strategy: Involves creating a comprehensive and robust portfolio of patents that collectively provide extensive protection for a technology or product. This strategy aims to build a "fortress" of IPRs making it difficult for competitors to design around the patents or enter the market without infringing on one or more patents within the portfolio.  

Defensive Publishing: Instead of filing for a patent, you may choose to publish your invention to prevent others from patenting it. This can be a cost-effective way to protect ideas while keeping them in the public domain, but you cannot retrospectively apply for patent protection after publishing.  

Geographic Expansion Strategy: You may prioritise filing patents in emerging markets to secure a competitive advantage before competitors enter those regions. This proactive approach can help establish market presence and brand recognition early on.  


Useful Resources 

If you would like to find out more about patents and protecting your intellectual property, the below links will be of use: 


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