Overseas IP Portfolio
Intellectual property is territorial. A trademark registered in Shenzhen and a patent granted in China stop protecting you the moment you cross the border.
Your domestic rights do not travel with your product
The territoriality principle means a patent filed in China or a trademark registered in China has effect only inside China. Selling into Europe, a Chinese patent does not stop local copying; entering Southeast Asia, a Chinese trademark does not prevent a local distributor from registering the same mark first.
AI companies face an additional obstacle: software and algorithms meet a higher eligibility threshold in several jurisdictions. US examination frequently rejects abstract ideas and pure algorithms as judicial exceptions; Europe emphasises technical effect and technical means. A granted Chinese algorithm patent cannot be assumed to survive abroad. What holds up overseas is usually a claim structure combining algorithm + concrete technical context + measurable technical effect.
What we do
- Portfolio map: patents, trademarks, copyright and trade secrets matched to target markets and competitor positions
- International patent filings: PCT international phase and 30-month national phase entry, Paris Convention priority
- Trademark registration abroad: Madrid system designations and direct national filings in key markets
- Eligibility and stability assessment: differences in examination standards and claim restructuring
- Freedom-to-operate analysis: infringement risk review and design-around before launch
- Squatting and enforcement: distributor filings, oppositions and invalidation, customs recordal and border measures
Typical situations
Situation 1: Brand registered by the local distributor
Two years into the Southeast Asian market, the local distributor has registered the same mark. It now demands exclusive distribution, threatening takedowns. The company holds no local trademark and no clean chain of prior-use evidence.
Our approach: assemble prior-use evidence (sales records, advertising spend, trade show materials), pursue opposition or invalidation, register in the remaining target markets, and add a no-registration covenant to distribution agreements.
Situation 2: PCT national phase deadline missed
The core algorithm was patented in China and granted. The team assumed international protection followed automatically. By the time European market entry was planned, the 30-month PCT deadline had passed and the Chinese application could no longer be the basis for European entry.
Our approach: for the lapsed technology, assess refiling improved embodiments overseas; for future R&D, add a “define target markets before filing” gate to the development process.
Situation 3: Algorithm patent rejected in the US as abstract
The US application was rejected as directed to an abstract idea without significantly more. Two rounds of argument failed to overcome the rejection.
Our approach: restructure claims to bind the algorithm to a concrete technical context (inference scheduling under specific hardware constraints, latency improvement), supply measurable technical effect evidence, and where useful file a continuation to preserve the original priority date.
Process and deliverables
| Stage | Work | Deliverables |
|---|---|---|
| 1 | Target market and competitor review, portfolio design | Overseas IP map |
| 2 | PCT and Madrid filings | Filing documents + deadline tracker |
| 3 | Eligibility and stability assessment | Claim recommendations + prosecution strategy |
| 4 | FTO analysis and design-around | FTO report + design-around plan |
| Ongoing | Squatting monitoring, annuities, border protection | Monitoring report + annuity register + customs recordal |
Frequently asked
Is PCT an “international patent”? No. PCT is an application procedure; grant still happens country by country in the national phase. Its value is the 30-month decision window.
Does a Madrid trademark cover every country? It covers contracting parties, but the US and several Southeast Asian states may still issue separate objections, and for five years the registration depends on the Chinese base mark.
Patent or copyright for software? Both, in parallel. Copyright registration is cheap and fast but protects expression, not ideas; patents protect technical solutions but face long prosecution and eligibility hurdles. For core algorithms, combine patents with trade secrets.
When should FTO be done? Six to twelve months before market entry, or before the product is frozen. After a claim is filed against you, design-around costs an order of magnitude more.
Legal basis
- Patent Cooperation Treaty; Paris Convention for the Protection of Industrial Property
- Madrid Agreement and Protocol Concerning the International Registration of Marks
- US Patent Act section 101 and the Alice eligibility framework
- European Patent Convention and EPO Guidelines on technical character
- Regulations on Customs Protection of Intellectual Property