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By Chris Keall
First register your patent in this country.
That’s the advice from Bell Gully partner Jonathan Ross, for New Zealand exporters wanting to set up a cross-border intellectual property (IP) strategy.
Preparation and registration will cost around $2,000.
After 12 months, Kiwi companies can then target individual countries.
Costs vary. The United Kingdom patent process is around $3,500; for both China and the United States it’s $6,000 to $10,000.
In each country, this includes legal fees, official filing fees, and a patent search to establish whether your particular invention is sufficiently novel to warrant protection.
Another option is to file an international application under the Patent Co-operation Treaty (PCT) of the Geneva-based World International Patent Office (WIPO).
This covers 130 countries and costs around $8,000 to $10,000.
Ross says this provisional patent process buys exporters time.
Companies must still make individual patent applications in countries where they want it enforced.
But they will have 30 months to evaluate and refine the targets.
New Zealand exporters currently have to take a country-by-country approach to trademark registration, says Bell Gully senior associate Colleen Cavanagh.
Costs vary and companies need to look for hidden expenses.
For example, the legal and filing fees for a trademark search and application in China might run to around $2,500.
But exporters should also budget for translation work which can be steeper than usual in a technical area such as a trademark, or patent, application.
New Zealand’s international trademark process will be streamlined when this country joins the Madrid Protocol.
Created by the World Trade Organisation (WTO) in 1989 and administered by WIPO, the protocol allows a single application to cover all its member countries.
By August 2008, 74 countries were signatories to the protocol. They include the United States, United Kingdom, China, Australia and most European countries.
Cavanagh says New Zealand membership is likely within the next 12 months.
New Zealand exporters can currently use the European Union’s Community Mark. This allows for a single trademark application to cover its 27 member countries.
The flipside is that a single objection will derail the process in all 27 states.
Associated costs are around $10,000 to $16,000.
www.wipo.int/madrid/en/members
This article originally appeared as part of ‘Hot property’, by Chris Keall, in Bright magazine on September / October 2008. Issue 30.
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