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As businesses expand globally, protecting intellectual property (IP) solely within Japan is no longer sufficient.

To safeguard your technology and brand from counterfeiting and unauthorized use, it’s essential to develop a strategic approach to securing IP rights overseas.

However, each country has its own legal framework, making it difficult to determine where, when, and how to file.

In this article, we break down the key systems and filing routes for obtaining patents, utility models, designs, and trademarks abroad.

1. Patents & Utility Models

There are two primary routes for obtaining patent or utility model rights in foreign countries:

• Direct Filing
  This involves submitting applications directly to the patent offices of each target country.
  Since each jurisdiction has its own language and documentation requirements, applicants often need to work with local agents.
  Additionally, examination standards and timelines vary by country, making the process complex and time-consuming.
• PCT International Application
  Under the Patent Cooperation Treaty (PCT), applicants can file a single international application through their home patent office.
  This application is then recognized as having the same legal effect as if filed in all PCT member countries.
  The PCT route simplifies the initial filing process and provides more time to decide in which countries to pursue protection.

2. Designs

To protect designs internationally, applicants can choose between two main filing options:

• Direct Filing
  Similar to patents, this involves filing separately in each country or region.
  Applicants must prepare documents in accordance with each jurisdiction’s legal and procedural requirements, often with the assistance of local representatives.
  This method can be costly and time-intensive when targeting multiple countries.
• Hague System
  Based on the Geneva Act of the Hague Agreement, this system allows applicants to file a single international design application through the World Intellectual Property Organization (WIPO).
  After submission, WIPO registers and publishes the design, and notifies each designated country.
  This streamlined process enables efficient protection across multiple jurisdictions with a single application.

3. Trademarks

When launching products or services internationally, securing trademark rights in each target market is crucial for brand protection.

There are two main approaches:

• Direct Filing
  Applicants file separate trademark applications with each country’s trademark office.
  This requires preparing documents in the appropriate language and format, often with the help of local agents.
  Post-registration management, including renewals, must also be handled individually in each country, which can be burdensome.
• Madrid Protocol (International Trademark Application)
  This system, based on the Madrid Protocol, enables applicants to file a single international application through the Japan Patent Office (JPO), using a domestic application or registration as the base.
  After a formal examination, the application is forwarded to WIPO, which registers and notifies designated member countries.
  Each country then conducts its own substantive examination.
  The Madrid system allows centralized management of registrations and renewals, offering significant advantages for businesses expanding globally.

As of April 2024, the Madrid Protocol includes 114 member countries and regions, covering major markets such as China, South Korea, the United States, and the European Union.

This makes it a powerful tool for efficient global trademark protection.

Conclusion

Securing IP rights abroad is essential not only for preventing counterfeiting and protecting your brand, but also for building trust and ensuring business stability in international markets.

At SKIP, our team of experts is well-versed in the legal systems of various countries and offers comprehensive support for international applications of patents, designs, and trademarks.

If you’re planning to expand your business overseas and need a trusted partner to navigate the complexities of global IP protection, feel free to contact us anytime.