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
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
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
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
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
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