Protecting intellectual property rights of your sme abroad

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Alec Ncube
Why should your SME protect its IP abroad?

SOONER or later, many small and medium-sized enterprises (SMEs) operate in more than one market selling their products or services or

licensing/franchising their Intellectual Property (IP) rights and know-how beyond their national borders.

IP rights, however, are territorial, implying that they are usually only protected in the home country or region where protection has been applied for and obtained.

Protecting IP in export markets is therefore crucial so as to enjoy the same benefits of protection abroad as are enjoyed on the domestic market.

You should carefully consider applying for IP protection well in time in all countries to which you are likely to export or license your product or service in the foreseeable future.

When should your SME protect its Intellectual Property abroad?

As a general recommendation, your SME should make sure to obtain adequate protection in all relevant export markets as early as possible.

With regard to patents for inventions, most countries allow a 12-month priority period from the date of filing of the first application for applying for patents in other countries.

Once this period has elapsed you may no longer be able to obtain patent protection in other countries. This may signify an important loss of earnings from your export operations.

With regard to trademarks and industrial designs, most countries provide a six-months priority period from the date of filing of the first application for applying for trademarks and industrial designs in other countries.

With regard to copyright, if you are a national or resident of a country party to the Berne Convention for the Protection of Literary and Artistic Works or member of the World Trade Organisation (WTO) bound by the provisions of the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (or TRIPS Agreement), which is administered by the World Trade Organisation (WTO), or if you have published your work for the first time or at least simultaneously in one of the above countries, your copyright will be automatically protected in all other countries that are party to the Berne Convention or are members of the WTO.

How can your SME protect its Intellectual Property abroad?

National Applications

One option is to seek protection in individual countries separately by applying directly to national Industrial/Intellectual Property Offices.

Each application may have to be translated into a prescribed language which is usually the national language.

You will be required to pay the national application fees and, particularly in the case of patents, you may need to entrust an IP agent or attorney who will assist you in making sure the application meets national requirements.

If you are still in the phase of assessing the commercial viability of an invention or are still exploring potential export markets or licensing partners, the national process would appear to be particularly expensive and cumbersome, especially where protection is being sought in a large number of countries.

In such cases, the facilities offered by the WIPO-administered systems of international protection for inventions, marks and industrial designs offer a simpler and generally less expensive alternative.

National Applications in Zimbabwe are processed at the Zimbabwe Intellectual Property Office (ZIPO).

Regional Applications

Some countries have established regional agreements for obtaining IP protection for an entire region with a single application. The regional IP offices include:

-European Patent Office (for European patents)
-Office for Harmonisation in the Internal Market (for European Community trademarks and, in the future, industrial designs)
-African Regional Intellectual Property Organisation (ARIPO, based in Harare, Zimbabwe)
-African Intellectual Property Office (OAPI, for Francophone Africa, based in Cameroon)
-United States Patent and Trade Mark Office (USPTO)

International protection

World Intellectual Property Organisation (WIPO), administered systems of international protection significantly simplifies the process for simultaneously seeking IP protection in a large number of countries.

Rather than filing national applications in many languages, the systems of international protection enable you to file a single application, in one language, and to pay one application fee.

These international filing systems not only facilitate the process but also, in the case of marks and industrial designs, considerably reduce your costs for obtaining international protection (in the case of patents, the PCT helps your SME in gaining time to assess the commercial value of your invention before national fees are to be paid in the national phase).

WIPO-administered systems of international protection include three different mechanisms of protection for specific industrial property rights.

-International protection of inventions is provided under the Patent Cooperation Treaty (PCT system) administered by the World Intellectual Property Organisation (WIPO). This is a worldwide system for simplified multiple filing of patent applications.

By filing one international patent application under the PCT, you actually apply for protection of an invention in each of a large number of member countries (now more than one hundred) throughout the world.

-International protection of trademarks is provided under the “Madrid System.” The Madrid system simplifies greatly the procedures for registering a trademark in multiple countries that are party to the Madrid system. Zimbabwe recently ratified the Madrid Protocol.

An international registration under the Madrid system produces the same effects as an application for registration of the mark filed in each of the countries designated by the applicant and, unless rejected by the office of a designated country within a certain period, has the same effect in that country as a registration in the Trademark Registry of that country.   (See also “Twenty Questions About the Madrid Protocol” (Adobe PDF).

-International protection of industrial designs is provided by the Hague Agreement. This system gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency.

-Aleck Ncube is an Intellectual Property Scholar. He can be contacted on [email protected] or follow me on Twitter: @aleckncube

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