Expanding Horizons

Securing Intellectual Property Beyond Borders

At Wynnes, we recognise the significance of safeguarding your intellectual assets not only domestically but on a global scale. The journey of extending protection for Patents, Trade Marks, and Designs beyond Australian shores is a strategic move that demands a meticulous understanding of international protocols and timelines.

The venture into overseas protection begins with identifying the right jurisdictions. Typically, the focal points are countries with major markets for your products or services, and those where the product can be economically manufactured. This strategic expansion maximises the commercial potential of your intellectual property (IP).

Patents: Seizing The Golden Year

The initial year post filing a patent application is often termed as the ‘Golden Year’. This period is crucial as it holds the status of ‘patent pending’ in all patent-recognising countries, creating a window to generate interest in your invention. The buzz created during this time can be a substantial indicator for where overseas protection could be most beneficial.

The subsequent step could be filing a PCT (Patent Cooperation Treaty) application, which extends the decision-making horizon by an additional one and a half years. This effectively provides a span of two and a half years from the priority date to discern which countries to extend your patent protection into. The PCT route is a prudent choice for inventors seeking time to evaluate the commercial viability across different geographies.

Trade Marks: Retaining Priority Through Timely Filing

For Trade Marks, the timing of your overseas applications is pivotal in retaining the priority date from the Australian application. Filing overseas applications within six months of the Australian filing keeps the priority date intact, providing early protection which is crucial in competitive markets. It offers a legal advantage in Trade Mark disputes, minimises the risk of similar or identical Trade Mark filings by others, and avoids potential costs arising from legal disputes or rebranding. Moreover, it simplifies administrative tracking of your Trade Mark portfolio across different jurisdictions.

Post the six-month mark, overseas applications can still be filed; however, they will be assigned new priority dates. This nuanced timeline should guide your global Trade Mark protection strategy to ensure the robustness of your brand’s identity across borders.

Designs: Adhering to Deadlines

International design protection also comes with its own set of timelines. The deadline to file corresponding design applications overseas is 6 months from the Australian filing date. Timely filings ensure that the aesthetic or ornamental aspects of your products are well-protected, maintaining a competitive edge in global markets.

Due to this short deadline, it is imperative to have marketing material ready to go as soon as the initial design application has been filed. Having well-prepared marketing strategies aids in making an informed decision regarding which countries to consider for design protection, based on the reception and interest generated in various markets.

The journey of global IP protection is a meticulously charted course that reaps substantial rewards when navigated with precision. Success in this venture not only demands a strategic outlook but a keen understanding of international legal frameworks and deadlines. At Wynnes, we are poised to provide you with the requisite guidance and support in every step of this journey, ensuring that your intellectual assets are robustly safeguarded across the global stage, thereby significantly bolstering the chances for your products or services to succeed in international markets.