Suggested Factors to Take Into Consideration When Electing Countries to Protect Developments Through Industrial Property

It is good to know about inventors or companies who wish to take their technology, goods or services out from their countries of origin seeking to obtain monopoly benefits governments offer, under the protection acquired through the different industrial property figures described in the Industrial Property Law.

Many of these individual or corporation entities are interested, in the first place, to protect their industrial property worldwide. However, after being aware of the high costs related to this action, they decide to be more selective, usually requesting their agents or representatives suggestions regarding which territories to select in order to extend their rights, particularly because there is not a system which gives worldwide protection to any IP figure.

The economic factor is, undoubtedly, the first main factor to consider when choosing a country, since although the prosecution period of an application may take a long time, the expenses are normally high from the filing up to the allowance. Moreover, the expenses are normally done in a foreign currency. This must be taken into account in order to let the resources of the individual or the firm to be enough until the allowance and, furthermore, to maintain the acquired rights until the established expiry of the protection periods.

Besides, there are, however, other factors that might be considered at the moment of making the election of countries to file a protection application, some of them are as follows:

1. To have in mind the due date for taking advantage of the extension of time benefits given by the Paris Convention (priority date).
2. To participate in international trade shows or commercial exhibits in order to generate interest of people from specific countries in the technology, products or services, taking care not to exceed the grace period granted by the governments to request the protection of the different IP figures.
3. To conduct marketing research in the countries of interest that may be potential markets for the exploitation of the technology, products or services. This action may be determinant in the selection of a specific country, since the rights obtained in any country has to be exploited, or eventually, the rights may be lost and therewith all the investment that has already been done.
4. To request costs, at least estimate costs, to be generated in the prosecution of the application(s), since these costs vary, in occasions in a wide manner, from one country to another.
5. To request expert opinions related to the actual development level of the IP system in the country of interest. Some countries have slow prosecution systems and take more that the average time to resolve the granting or denial of IP rights.
6. To request expert opinions regarding to the enforcement of the IP rights against third parties in the country of interest. This can be very useful when dealing with new technology, which may be of interest and illegally copied or reproduced by others.
7. To consider the distance between the geographic locations of the country of origin and the country of interest, as well as the facilities or difficulties to fulfill the commercial requirements of that market (transportation, import fees, licenses, etc).
8. To determine if the exploitation of rights would be carried out by the individual, the company or by a third party.
9. As the case may be, to search for third parties interested in sponsoring the whole or part of the total costs generated by the prosecution of the application with the government of a specific country, by means of a licensing or selling contract of the IP rights.

Having this information may without any doubt, give a wider scope of the international business possibilities, which may result useful at the moment of taking decisions, in order to ensure the recovering of the investment in protecting IP developments, and to obtain profits, which is the main purpose of having an exclusive right of any IP figure in a determined territory.

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.