mechanisms to reduce filing and prosecution costs across multiple jurisdictions, such as the European Patent Convention for patents and the Madrid Protocol for trade marks, registering an IP asset in individual countries comes at an inevitable cost. Keep in mind that the need to pay renewal fees on granted rights, as well as on some pending applications, extends those cost far into the future, escalating year on year.
You should prioritise territories according to market size and potential, and according to the locations of existing and likely future competitors. If your competitors are small in number and located in a small number or countries, that might be key in defining your territorial strategy. If they are larger in number and more geographically dispersed, then this may change the approach. Of course a blended strategy might be appropriate. You will also need to think about the cost of registering IP in particular countries versus the effectiveness of the registered IP. It might not be worth acting in a given country where registration costs are high and the enforceability of those rights is low. Also bear in mind that your objective is likely to include obtaining granted patents at the point of exit. If this is the case, you might prefer to avoid territories which, although potentially important, are slow to grant rights. Keep in mind that many countries offer the option to accelerate prosecution and potentially grant. This is likely though to bring costs forward.
The perceived value of registered IP assets to investors and purchasers must be considered. With the exception perhaps of some niche products and services, at least in the high-tech space, investors are likely to perceive US patents as having a significantly greater value than patents in other countries. In deciding how to spend your IP budget, consider whether there is more value in a larger number of assets protected in a smaller number of countries, versus a smaller number of assets protected across a larger number of countries. From experience, the former approach is likely to result in a more attractive and valuable portfolio of IP assets.
In the case of patents, utility models and registered designs, a challenge is that decisions on territories for individual assets need to be made early. It will probably not be possible to add countries further down the line. The situation is different for trade marks where protection may be sought at any stage, although there are risks if others seek protection in the meantime. Once again, in setting your objectives it can be helpful to look at how the competition has behaved. An established and successful competitor is likely to have a well worked out filing strategy.
As for trade marks, considerations when selecting the territories for protection may be different. Firstly, timescales – do you expect to start operating in a particular territory within the next 3-5 years? If your launch in a territory is likely to be further in to the future than this, then you need to keep in mind that in most countries trade mark registrations become vulnerable to challenge for non-use once they have been registered for 3-5 years, so you don't want to apply too early, unless you see value in filing to put your flag in the sand and to act as a defensive registration. Secondly, think about protection in markets where you may not want to sell your products but where manufacturing may take place, and thirdly, you may want to consider protection in countries known for prolific counterfeiting of goods, or countries where trade mark "squatting" is particularly rife.
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.
