Extension of UK Intellectual Property Rights to Other Territories

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1 P a g e 1 Extension of UK Intellectual Property Rights to Other Territories Granted UK ( GB ) patents, trademarks and registered designs can be extended to a number of other territories such as British overseas territories and ex colonies. The following territories allow extension of at least patents and have populations > 250,000: Brunei (417,000) Fiji (909,000) Gambia (1,882,000) Hong Kong (7,400,000) Sierra Leone (7,100,000) Solomon (642,000) Zanzibar (1,304,000) There is no one single provision or condition for registration. However, there are some trends. Some territories extend GB rights automatically without registration, but most require separate registration, at least for patents and Trademarks. Where registration is required, the application is usually to be made locally (not via the UKIPO or other UK body). The extension may be as-of-right, or sometimes comes with a rider that the extension is normally allowed. A typical deadline for registering the extension of patent rights is 3 years from grant of the GB patent. Some territories allow extension based on either a direct GB patent granted by the UKIPO or a GB ratification of a European patent granted by the EPO (an EP(GP) patent). Others only allow extension based on a direct GB patent.

2 P a g e 2 Trademarks are typically registrable at any time within the life of. This does not include an EU or Madrid Protocol unless stated otherwise below. For all types or rights, the extension often expires with the UK rights. So e.g. if the GB renewal fees are not paid or the GB patent is revoked, the extension rights also lapse. Registered design rights often extend automatically (no separate registration needed). Anguilla (15,000) Antigua and Barbuda (91,000) Bahamas (393,000) Bermuda (64,000) British Antarctic (250 in summer) British Indian Ocean (2,500) British Virgin (28,000) Brunei (417,000) Cayman (57, 000) Cyprus ** (1,141,000) from grant of GB patent, from grant of GB patent, Any time within life of GB mark upon production of a UK trade mark certificate GB registered marks can be used in support of a claim to distinctiveness, any time in the life of the GB mark extended Any time after grant of GB or (But in EPC) extend Any time within life of GB mark (But in EU) (But in EU)

3 P a g e 3 Falkland (2,900) Fiji (909,000) Gambia (1,882,000) Gibraltar (32,000) Grenada (110,000) Guernsey (63,000) Guyana (215,000) Hong Kong *** (7,400,000) Isle of Man (84,000) Jersey (100,000) Apply any time after grant of GB or EP(GB) patent : Apply within 6 months from publication of GB application. extended extend Apply within 4 months of the GB application extend. Also UK s membership of Madrid Protocol extends to Isle of Man, and EU trademarks are recognized.. Also extends protection to EU and international trademarks. Apply at any time in life of the GB registration

4 P a g e 4 Kiribati (104,000) Malta (445,000) Montserrat (5,000) Nauru (10,000) Pitcairn (57) St Helena & dependencies (Ascension Island and Tristan De Cunha) (5,000) St Kitts & Nevis (55,000) St Lucia (185,000) St Vincent (103,000) Samoa (192,000) Seychelles (92,000) after grant of GB or (But in EPC) after grant of GB patent.. EU trademarks also have effect. (But in EU) Apply at any time in life of the GB registration Apply within 4 months from filing GB application information information information after grant of GB patent, Apply within 2 years Apply within 12 months after GB application

5 P a g e 5 Sierra Leone (7,100,000) Solomon (642,000) South Georgia & the Sandwich (30) Swaziland (17,000) United Republic of Tanzania (51,900,000) Includes Zanzibar (1,304,000) Tonga (103,000) Turks & Caicos (31,000) Tuvalu (11,000) Uganda (37,900,000) Vanautu (286,000). Apply within 12 months after GB application after grant of GB patent, Apply within 5 years after grant of GB or. (But new legislation being prepared) information Requires fee. Deadline info not available. Ambiguous But legislation being implemented to extend. EU trademarks

6 Martyn Townsend, Page White and Farrer Martyn is a UK Charted Patent attorney (CPA) and European patent attorney (EPA), as well as an associate member of the American Intellectual Property Law Association (AIPLA). He has worked in intellectual property at Page White & Farrer since 2004 and has been a director of the firm since He has particular expertise in telecommunications, AV, digital electronics and computing (software and hardware). His professional experience includes drafting and prosecution of patent applications, oppositions and appeals, standards related matters, and portfolio management. Martyn Townsend Patent Attorney, Page White and Farrer +44 (0) martyn.townsend@pagewhite.com Bedford House John Street London WC1N 2BF