Protecting intellectual property overseas

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

IP rights are territorial, ie they only give protection in the country where they were granted or registered. Therefore, if you only have UK protection, 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, 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 rights in the UK is fairly straightforward. 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 allow individuals or businesses from other countries to register their trade marks using a single international application, which will cover the countries covered by the Protocol. An international application must be based on an existing trade mark application or registration. For example, 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 more information, read International trade marks.

The EU trade mark (EUTM) system allows for registration of a trade mark at the European Intellectual Property Office (EUIPO). For more information, read Registering trade marks in the EU.

For information on the costs associated with registering your trade mark abroad, read How much does a trade mark cost.

Patents

A UK patent provides a monopoly over a unique invention or process. If granted, it can stop others 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 a separate patent in each country you choose. You can apply for protection in individual countries in Europe by applying to the national patent office in each country. This is generally 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 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 in which you wish to protect your patent. You can register your patent with the UK IPO, EUIPO, or directly to the WIPO (which administers the PCT).

Due to the complexity and nature of patent applications, it's best to Ask a lawyer for help protecting a patent internationally.

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, under which 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 an RCD through the EUIPO. You can fill in an application form on the EUIPO website.

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 essentially 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 WIPO Performances and Phonograms Treaty (WPPT)

• The WIPO Copyright Treaty (WCT)

• The World Trade Organisation 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'.

Assigning or licensing IP abroad means you are transferring ownership of or allowing someone else to use your IP rights for their business or trade. However as IP rights are territorial, if you transfer or licence IP rights to someone who is going to use the IP rights abroad, they will not be protected from infringing other parties' IP rights in that country. The same rule applies when UK nationals or residents receive an assignment or licence of IP from an international or overseas business; you will not be protected unless the IP 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, in which case it will receive automatic protection.

For information on protecting your intellectual property in specific countries, please see the Government’s guidance.

If you're thinking of doing business in South East Asia, China, Latin America, North America, the Gulf States, or India, there is free help and advice available through the IPO's IP attaché network. They work with UK businesses and individuals and help them with local IP matters (eg in one of these international locations) and are based in their representative countries. Their services are free and you can find their contact details on the Government’s website.