EU patents in rest of world markets

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Are EU patents also efficient in Latin America to have our products protected from copying?

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Karl Royce, on behalf of UK Trade & Investment Chile in Santiago Chile.

There's no standard answer as countries within Latin America are very different. I can respond from a Chile perspective if you could provide some further information on your product.
Karl Royce

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Hi.

The short answer is likely to be no. Not unless you have done something to extend your Patent protection under one of the international agreements such as PCT. Generally speaking patents only cover the territory they are granted in. So UK Patents only cover the UK and EU Patents only cover EU countries (not necessarily all EU countries). For extra assistance try the IPO web site www.ipo.gov.uk/ip4b-abroad.htm or their freephone number 0300 300 2000

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Gabriela Castro-Fontoura, on behalf of Sunny Sky Solutions in Uruguay.

I agree with both comments above: remember there are 20 countries in Latin America and each has its own intellectual property law. There are countries well-known for their respect of patents and trademarks, and others are well-known for their lack of respect to them.
I had a discussion recently with two UK manufacturing clients on this particular issue as we supported them expanding into Latin America. One of them said that they'd rather not file for trademarks and patents locally because they do not want to disclose so much information. Another one said that, if there is a breach, they are not prepared to go through years of disputes (things can take a while here!), costly lawyers and so on... (their views, not mine, just sharing!). It really depends on your product/service but choose your market(s) carefully and remember there is a lot of regional synergies here that you need to be aware of, too. Some sectors are more susceptible to infringement than others and it also depends on how powerful your brand is.
Hope this helps. For more information, www.sunnyskysolutions.co.uk
Gabriela

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Matthew Allen, on behalf of Allen IP Limited in B16.

Bill Russell at the UK IP Office is quite right in that patents are generally territorial in nature, generally covering acts in the territory of the patent. By way of example, manufacture in Latin America would not infringe a European (or EU) patent. Importing a product from Latin America to Europe might however.

To give a professional IP advisor's perspective, an International patent application filed under the Patent Cooperation Treaty (PCT) system, administered by the World Intellectual Property Office (WIPO), is comfortably the most popular way to initiate patent protection overseas.

Have a look at http://www.wipo.int/pct/en/pct_contracting_states.html to see the list of countries the PCT system now covers. For most applicants, the listed countries provides sufficient options. If a country of interest is not on the list you would need to seek separate patent protection in the country concerned, typically filing a national patent application.

It should be noted an International (also called, a PCT) application only provides provisional protection in the above mentioned list of countries. Ultimately you need to proceed in individual countries of interest. The PCT however allows you to defer doing that until a much later stage than would apply if you filed national patent applications in the countries of interest.

If readers have any questions please do not hesitate to get in touch.

Matthew Allen
European patent attorney
Allen IP Limited
www.allenip.com

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Fantastic and very clear advice and comment on the reality of the situation re the "international" viability of EU patents, thank you.

I would like to reassure you though that at least in Chile we have existing members of the chamber of commerce who specialise on patents and would be very happy to give you more local advice on how to protect your intellectual property, please let me know if I can connect you.

best regards
Greg Holland

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