How to apply for IP overseas

Protecting your intellectual property (IP) in Australia doesn’t automatically protect it in other countries. You'll need to obtain and manage your IP protection for each country that you intend to operate in.  

1. Determine if you need overseas IP protection

Obtaining IP protection overseas is something you should consider doing before, or soon after, you file for protection in Australia.

Even if you're not sure you want to expand your business overseas straight away, securing your IP rights in selected countries now may help you to do so in the future.

Understand the risks

Overseas IP protection is a complex process. It's important to have a clear understanding of the steps you need to follow, otherwise you could expose yourself to significant risk.

Unless you have your IP protected in other countries, you could be at risk of:

  1. Third parties using your IP to make and sell products in the country
  2. Not being able to use your IP in those markets if someone else already owns the IP right
  3. Having to change your IP to avoid infringement
  4. Having to license or purchase your IP back
  5. Being sued for IP infringement.

Develop your global strategy

A global strategy will help you decide how and where to apply for overseas protection. Before you get started, here's some things you need to consider as part of your strategy.

Where to apply

You'll need to consider:

  1. Which countries you should apply to
  2. Whether you should apply overseas before, after, or at the same time you apply in Australia
  3. Whether to apply directly to each country at once or through a single filing that can reach multiple countries at the same time. Your options to apply will depend on the type of IP right that you need.

What you need to know

You'll need to:

  1. Understand the application process for each country
  2. Know the time limits and the consequences if you don't follow the right steps. Each country has well defined timelines. If you miss those, you may not be able to seek protection. If you've already applied in Australia, you may be at risk of missing the deadline to apply
  3. Understand the costs involved and the impact this will have on how many places you choose to seek protection.

Ask yourself

  1. Do you have the legal knowledge to successfully apply in various different countries?
  2. Do you have the resources to successfully commercialise outside Australia?
  3. Do you have the marketing and promotion networks to successfully commercialise in other countries?

A good strategy will help you set your business and IP up for success. If you need help setting up a strategy and navigating overseas IP protection, we'd recommend engaging an IP professional.

Engage an IP professional 

Claiming your Australian filing date overseas

Australia, along with over 170 other countries, belongs to the International Union for the Protection of Industrial Property. This was established by the Paris Convention.

The Paris Convention can help you protect your IP in other countries. It allows you to claim the same filing date in your overseas applications, provided you file them within 6 to 12 months of your original application. The filing timeframe depends on the type of IP right.

The Paris Convention doesn't apply to plant breeder's rights.

The Paris Convention

2. Understand how to apply for IP rights

Each country will offer varying levels of registered IP protection and may have different application requirements to Australia. Here's what to consider before applying for IP protection overseas.

How to apply

There are three ways to apply for trade mark protection overseas:

  1. Directly through a country’s intellectual property office. Note that some countries may require you to apply via an IP professional.
  2. Through a regional intellectual property office that administers the rights for a specific group of countries. For example the European Union Intellectual Property Office (EUIPO) or the Benelux Organization for Intellectual Property (BOIP)
  3. Through the Madrid System. Administered by the World Intellectual Property Organization (WIPO) this allows you to file for trade mark protection in a number of countries through one application.
Madrid System

How to apply

There are two ways to apply for patent protection overseas:

  1. Directly through the country or regional IP office. Note that some countries may require you to apply via an IP professional.
  2. Through the Patent Cooperation Treaty (PCT) administered by the World Intellectual Property Organization (WIPO). This allows you to file a single international application that has the same effect as filing multiple single applications to each country.

    If you decide to go through PCT, you'll need to take your international application and convert it to a national application in each country where you want a patent. This is known as entering the national phase.

If you have an Australian provisional application, you have 12 months to file an equivalent application overseas. This allows you to maintain your priority date from your first application.

International patent system     Patent Cooperation Treaty  

It’s important to know that Australia has a unique design system compared to other countries.

The Paris Convention allows overseas protection in a large number of countries to be back dated to your original Australian filing date. If you file in Australia first, and then another country within six months, your priority date will be the date that you originally filed in Australia.

In some countries, unregistered designs can be protected without the need for registration.

How to apply

There are two main ways to apply for design protection overseas:

  1. Directly through the country’s intellectual property office. Note that some countries may require you to apply via an IP professional.
  2. Through a regional intellectual property office that administers the rights for a specific group of countries. For example the European Union Intellectual Property Office (EUIPO) or the Benelux Organization for Intellectual Property (BOIP)

While Australia isn't a member, you may be able to apply using the Hague System if you meet its eligibility requirements.

European Union Intellectual Property Office

How to apply

There are two ways to apply for plant breeder's rights protection overseas:

  1. Directly to the country’s relevant registration office. Note that some countries may require you to apply via an IP professional.

    2. You can use a single application for:

    • The European Union (EU) - the Community Plant Variety Office provides potential plant breeder’s rights protection in all EU countries
    • All African countries that are affiliated under the African Regional Intellectual Property Organization (ARIPO).

    Community Plant Variety Office  ARIPO

  2. If the individual country is a member of the International Union for the Protection of New Varieties of Plants (UPOV), you can apply to that country via the UPOV online application form tool (PRISMA).

    3. PRISMA

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