How do I export my IP?
This article will be helping you find your own answers to 10 key questions about your intellectual property, or IP. Your guide is Martin Brassell, CEO of Inngot, the company that provides web tools to identify, value and promote your IP.
Many online businesses are 'born global'. However, it doesn't follow that they are globally protected. How do you ensure your IP protection grows as your sales do?
Starting with the most frequently used type of IP right: as explained in a previous article, copyright is generally understood in most countries and similar rules apply everywhere - in theory - thanks to the Berne Convention. However, enforcement can be a different matter. In the US and India, for example, it pays to apply for official registration if you think you are at risk of infringement.
If you have a UK trade mark, it is reasonably straightforward to extend your protection. The Community Trade Mark applies across Europe and can be obtained via a single application process. If you prefer to select countries individually, or extend protection beyond Europe, then the Madrid Protocol (observed by most countries) enables your existing trade mark to be registered more simply, for a fee.
The main point to watch, especially with word marks, is whether your chosen brand means what you want it to in each territory where it will be used. You don't want to follow the example of General Motors, who discovered that 'Nova' in Spain sounds like 'No va', or 'doesn't go'... possibly not the best choice of name for a car.
There's also a community equivalent of the registered design (as well as a very short-lived automatic design right, which provides limited protection for three years). This offers similar benefits to the Community Trade Mark in terms of ease of application. In the US, design registrations are referred to as 'design patents' (as opposed to 'utility patents') and are processed by the same office.
Patents are a rather more complex proposition. There are some important deadlines that need to be met when extending patent protection to other territories. For example, if you want to use the most popular mechanism called the Patent Co-operation Treaty, or PCT, you will need to file your application for it within 12 months of first applying in the UK (or another country in the Paris Convention) to preserve your priority date.
At the time of writing, there is not a unified patent for Europe, though from January 1 2014, this is set to change (after decades of wrangling). At present, you still need to have your patent 'translated' for individual countries prior to grant regardless of the route you choose to extend your application. Fortunately, given the costs involved in granting and subsequent renewals, it is rarely worthwhile trying to patent everywhere, and even multinational corporations seldom do so. Instead, you will pick and choose the territories most important to you in terms of sales or manufacture, and protect your invention there. If your patent concerns something mobile, you can attack infringers as soon as their products appear in a territory where your rights are protected.
Lastly, if you are working with a local agent, partner, distributor or licensee, get them involved in the search for infringing IP. It is in both your interests to do so (bearing in mind that cultural attitudes towards copying vary widely between different countries). You may also be able to agree a basis for sharing the costs associated with extending your IP protection.
Inngot is offering a free IP profile and action plan to Microsoft blog readers for a limited period. Visit www.inngot.com, click on the Microsoft icon, press the blue button and enter the following code when prompted: MSU74942. Inngot can also provide an online indicative IP valuation.