Most organisations do not have an unlimited budget, nor a fully global market. Therefore, it is important that the decision as to where to file for IP protection is made wisely.
Obviously the expected return from a market should be compared against the cost of gaining IP protection there. It should also be appreciated that IP protection can be dropped at any later stage if market return does not justify the ongoing cost.
It should be remembered that where the expected market return does not warrant the IP costs, sometimes a strong commercial position can be gained in a market without IP protection. For example, you may secure a niche market position by winning a government tender.
Even if the expected return would seem to justify the IP costs, other factors may indicate that the spend is not effective. For example, nature of your competitors coupled with a suspect legal system may mean that IP protection would neither act as a deterrent, nor be enforceable.
There may be markets you wish to exploit later than others. Dependent on budget, you may elect not to file now, but file if and when a market is more realistic and you have a patentable improvement over your base invention.
Another consideration is where your competitors are based.
I recommend that clients should always file in their home country. Unfortunately, this is because ex-employees often make formidable competitors.
If a competitor is also committed to manufacture in a particular country, then applications can be filed in that country as a blocking manoeuvre – even if this is not a large market for you. Thus, a competitor may find it difficult to compete in your markets as they are stopped from manufacturing and exporting from their base.
If you want to litigate fast, you can choose to file in a country without waiting on international conventions.
Further, you can sometimes formally expedite the examination process.
In the case of patents, in some countries you may file something along the lines of an Australian Innovation Patent. This proceeds quickly to grant compared to standard patents.
Yet another consideration is the location and markets of the parties with whom you wish to work.
For example, IP protection is important in China. It should form the base of any manufacturing agreement as the defined IP can provide clear parameters under which a manufacturing relationship can work.
Likewise, it is important that you realise that any collaborator can quickly turn into a competitor, particularly if they build up reputation or knowledge with respect to your product.
There are many factors that can influence your IP filing strategies. Make certain you communicate these to your IP strategists. They can help you rank countries in order of importance and provide you with estimates for filing your application - plus future costs. This way a valuable considered investment can be made.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.