Building A Global IP Strategy And Portfolio: Getting Started

Intellectual property (IP) may be intangible, but it can be your organisation's most valuable asset. #

However, IP rights are territorial. A patent or trade mark registration in one country does not automatically ensure protection in another. A well-managed, coordinated global portfolio enhances the commercial value of your business, minimises legal risk and strengthens your position with potential investors. For startups or SMEs preparing for international expansion, it can be difficult to know where to start when protecting patents, trade marks, designs and other intellectual property rights.

These are the foundational aspects of getting a global IP portfolio off the ground.

In this article... #

1. The IP audit
2. Market prioritisation
3. The fundamentals of international IP filing
4. Timings, coordination and best practices

The IP audit: a strategic first step #

Securing international protection can be expensive, therefore, it's crucial to know exactly what you want to protect. This starts with an IP audit, a systematic review and inventory of your intellectual property. The scope of an IP audit can vary tremendously depending on the size of the organisation. For many startups, it may be simple and straightforward. For established businesses, it can be a large project in itself. The process involves identifying and evaluating all of the IP relevant to your organisation. The audit gives you a clear understanding of the value, status and risks associated with your IP.

Core types of IP include patents (novel inventions and processes), trade marks (brand names, logos and slogans), copyrights (original works of authorship) and trade secrets (confidential business information). The audit will inform decisions about which assets you want to protect. Since protection entails expense, the commercial value must be worth it. As part of the audit process, ownership should be assigned to each asset. Formalising ownership has particular importance for startups and SMEs who may not have an IP policy in place or an IP clause in employment contracts.

This is because IP must be assigned before global protection can be sought. It ensures IP created by the founders, employees and contractors is transferred to the company.

Market prioritisation: opportunity, risk and necessity #

Once you know what you want to protect, you can look at where you want to protect it. Focus on markets most relevant to you right now or in the near future. Your selection framework should balance these three elements:

• Necessity: The first step is to secure rights in your home country (the 'priority filing'). This establishes your legal priority date.
  
• Opportunity: Prioritise countries with the biggest commercial potential and where you plan to generate the most revenue, including those where you are already selling. By filing where you have a presence, as well as in countries that might be crucial for attracting investors or licensing partners, you can future-proof your brand.
  
• Risk: Protect your IP in territories where you think it's most likely to be copied. Supply chains are another key risk consideration – you want to be filing in areas where you, your suppliers or your competitors are currently manufacturing. This prevents others from legally copying you.
  

Market selection scorecard #

A straightforward scoring system is one practical tool for comparing potential markets.

This may involve listing all of the potential markets of interest to your business (such as the UK, the US, China or Germany) and scoring them on a scale of 1-10 against factors that matter to your business. Typical examples include sales potential, competitive landscape, supply chains, manufacturing risk, cost of filing and IP enforceability.

If some factors matter more, weighting them will give you a clear hierarchy of where you ought to secure protection.

Once you have chosen where you want to file, you will need assistance to select the best 'routes' for filing - these are typically the regional systems like the PCT for patents and the Madrid System for trade marks. In Europe, this may also include the Unitary Patent, which allows a single patent right to be enforced across multiple EU member states.

Using these systems defers your costs and buys you time to choose the most lucrative markets.

The fundamentals of international IP filing #

To secure international protection, you must file for and obtain IP rights in countries and regions where you wish to expand. There are two key ways to do this: filing directly in each country or using centralised regional systems.

Direct filing #

Also known as the Paris Convention route, this involves filing your application directly with each national IP office where you want protection.

This approach allows you to claim a 'right of priority'. This means subsequent applications in other member Paris Convention countries, if made within a certain time frame, will be treated as if they were filed on the same date as your first (the 'priority date'). This timeframe is around 12 months for patents and designs and 6 months for trade marks.

Direct filing can be expensive and administratively complex. However, if you need to obtain protection quickly in a small group of territories, it can be the correct strategic choice.

Regional systems #

Centralised systems allow you to file a single application, which can later be pursued in multiple territories. This simplifies and streamlines the entire process. Two key regional systems to be aware of are the Patent Cooperation Treaty (for patents) and the Madrid System (for trade marks).

When contemplating regional systems, strategic input is essential. The way a patent is drafted or which trade mark classes are selected fundamentally impacts the strength of your IP. Here, an experienced IP attorney will ensure decisions taken feed into a wider strategy, rather than simply meeting formal requirements.

For patents: the Patent Cooperation Treaty #

The Patent Cooperation Treaty (PCT) is an international patent treaty established in 1970, currently with 158 contracting states. To use it, you file a single application with the World International Property Organization (WIPO), a UN agency and the central authority for global IP rights – ideally by enlisting the services of an experienced IP attorney.

A PCT application does not in itself grant the patent, but it reserves the right to pursue it in all participating territories for 30 or 31 months from your priority date. This makes the PCT a useful strategic tool for delaying costs, securing funding and assessing which markets offer the best opportunity before committing to a direct national filing. It also gives the opportunity to evaluate the commercial viability of your IP.

For the patent to be granted, you still need to enter the national (or regional) phase. This involves relevant national or regional offices assessing the application under its own laws and deciding whether to grant protection.

For patent protection across the EU: the Unitary Patent #

The Unitary Patent was introduced in June 2023. It provides uniform protection in all participating EU member states, instead of requiring validation separately in multiple countries.

The Unitary Patent provides a single right with one renewal fee paid to the European Patent Office. This right can be enforced through the closely-related Unified Patent Court (UPC), with decisions binding across all participating EU member states.

For trade marks: the Madrid System #

The Madrid System is the WIPO's international trade mark system. It allows you to seek protection in any (or all) of its 115 members (covering 131 countries) simultaneously, through a single application. To use the Madrid system, you must have an existing 'basic' trade mark application or registration at a Madrid System member's IP office before filing an application. Once filed, the target country's designated IP office reviews the trade mark application in line with its own laws. The application can be granted or refused, typically within 12 and 18 months.

The Madrid System centralises and simplifies the management of your trade marks, including applications and renewals. However, as with the PCT, the ultimate decision to grant rights remains territorial and is made by each national or regional IP office.

What about trade secrets? #

Patents become public knowledge 18 months after being filed. By contrast, trade secrets have infinite secrecy. Trade secrets can be necessary if you wish to protect confidential business information that gives you a competitive edge – examples could include proprietary manufacturing processes, exclusive customer lists or unpublished formulas.

Protection for trade secrets is internal and depends on taking reasonable steps to keep the information confidential, such as robust use of non-disclosure agreements, defined access controls and clear contracts for employees and contractors. There is no formal registration process. Whether a trade secret exists is decided by the courts when action is brought for misappropriation. The court will assess whether the information had commercial value because of its secrecy and whether reasonable steps were taken to maintain this secrecy.

Timings, coordination and best practices #

Global IP protection requires careful adherence to rigid timelines and the strategic use of international systems to manage costs and complexity.

The timeline for patents (Patent Cooperation Treaty) #

When it comes to patents, timing is crucial.

• 0 months – priority date: The day you file your first national application (usually in your home country) is the priority date. This is the starting date, with all subsequent deadlines measured from this point.
  
• 12 months – PCT deadline: In order to claim priority from your first filing, you must submit your PCT international application within 12 months of the priority date.
  
• 18 months – publication: At this point, the PCT application is published by WIPO. You should coordinate commercial announcements with this publication deadline.
  
• 30/31 months – national or regional phase: By 30 or 31 months (depending on the country), you enter the national or regional phase, for example at the European Patent Office (EPO) or the United States Patent and Trademark Office (USPTO). The office will examine the application and decide whether to grant a patent.

This timeline reveals the value of PCT. It buys you time to defer costs, assess markets, create a commercial strategy and secure funding before committing to costly national-stage filings. Because the PCT creates a single, standardised application form for all 158 contracting states, it streamlines and coordinates all the formal requirements and processes.

During the PCT process, the International Searching Authority (ISA) will prepare two documents:

• International Search Report – a list of relevant prior art
  
• Written Opinion – an initial, non-binding assessment of patentability

These documents provide useful early feedback and insights that you can coordinate with your attorneys before deciding on which markets to pursue.

Coordinating trade marks (the Madrid System) #

Whilst patents have a strong timeline emphasis, trade marks rely on centralised management and ongoing maintenance. The Madrid System allows you to file a single international application based on an existing national or regional trade mark application or registration. From here, you can designate the member countries you want protection in.

Renewals, ownership changes and updates can be managed through this one central filing at the WIPO, streamlining administration and cost. Remember that each designated country's individual IP office has the right to examine the application and issue a refusal based on conflicting marks or local rules.

Best practices when filing globally #

If you're new to international IP protection, whether you're dealing with patents or trade marks, the following principles are important:

• Formalise ownership: Founders, employees and contractors should all sign legally-sound contracts that explicitly assign IP to the company. This clear legal title is essential before seeking overseas protection.
  
• Choose local attorneys: For patents, choose an attorney with offices in the country where you are entering the national phase. For trade marks, you similarly need an attorney with a presence in the country where refusals are issued.
  
• Ensure accurate translations: Overseas filings often require translations into the local language by specialist patent translators who understand precise IP terminology. Translation can be a big point of error, especially for technical claims.
  
• Manage risk: Strong confidentiality steps – such as the use of non-disclosure agreements (NDAs) – will protect sensitive information. Infringing on another party's IP is another risk, so establish policies and procedures for IP clearance.

Once your IP portfolio is established, active market monitoring (or 'watching') is key for detecting infringements. Periodic IP audits can also help you to reassess and reevaluate your portfolio, potentially with an eye to expanding into other commercially-lucrative markets.

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.