Securing intellectual property (IP) rights across diverse jurisdictions is increasingly crucial in today's globalised economy. Registering patents in every country can be costly and time-consuming, yet patent re-registration offers a more streamlined alternative. This method enables patent holders to extend their protection to other regions based on an already granted patent from jurisdictions such as the UK, US, or European Union. 

What is Patent Re-registration? 

Patent re-registration, also known as a 'Patent of Introduction', enables an applicant to secure patent protection in additional jurisdictions without undergoing the complete examination process again. By leveraging a granted patent from one country, businesses can expand their IP rights more efficiently and cost-effectively. 

This approach is particularly beneficial for businesses aiming to establish patent protection in regions identified as commercially viable after the original patent grant. 

Countries and Jurisdictions that Allow Patent Re-registration 

1. British Overseas Territories: Territories such as Anguilla, Bermuda, Cayman Islands, and the British Virgin Islands permit re-registration based on UK patents, closely following UK intellectual property laws and simplifying the process for UK-based patent holders. 
2. Caribbean Nations: Countries like Grenada, St. Lucia, and Turks and Caicos facilitate re-registration based on UK patents, with some accepting patents from other Commonwealth countries, though UK patents are most commonly recognised. 
3. Pacific Islands: Fiji, Kiribati, and the Solomon Islands align their IP laws with British standards, allowing re-registration based on UK patents. 
4. African Countries: Nations like Seychelles, Sierra Leone, and Ethiopia permit the re-registration of UK patents. Ethiopia and the Democratic Republic of Congo (DRC) offer a flexible approach by allowing any foreign patent to be introduced without a strict deadline. The Kingdom of Eswatini (formerly Swaziland) automatically extends UK patents, and also allows for the re-registration of South African patents. 
5. United States and Other Regions: Cambodia validates both US and European patents, providing a straightforward path for re-registration in Southeast Asia. Hong Kong recognises patents granted in the UK, EPO, and Chinese Patent Office (CPO), facilitating patent extension into this crucial market. 
6. Australia and New Zealand: Though these countries do not have direct re-registration agreements, their involvement in the Patent Cooperation Treaty (PCT) and Patent Prosecution Highway (PPH) offers a streamlined process for securing protection based on existing patents. 

Benefits of Patent Re-registration over PCT Filing and Designation 

Re-registration offers several advantages over the PCT process: 

Cost Efficiency: Generally, in addition to being more cost-effective than a full PCT application, re-registration involves fewer procedural steps, reducing both filing and legal fees. 

Time Savings: Bypassing many procedural requirements such as local searches and examinations, re-registration can be quicker than the PCT process, which typically takes up to 30 months. 

Reduced Complexity: The administrative burden is less with re-registration, as it leverages the examination processes already conducted by another respected patent office. 

Increased Certainty: The likelihood of facing extensive objections or rejections is diminished, given that the patent has already been scrutinised and granted by one jurisdiction. 

Re-registration of South African Patents in Eswatini  

For South African businesses targeting the Eswatini market, extending patent protection is straightforward through the re-registration process. Initially, a patent must be granted by the South African Patent Office. The patent holder then needs to file for re-registration in Eswatini, within three years from the South African patent grant. It is essential to submit all necessary documents, including a copy of the granted South African patent along with patent specifications and claims, ensuring all documents comply with the requirements of Eswatini's IP office.  

Upon satisfactory review, Eswatini's Intellectual Property Office will issue a registration certificate that extends the protection of the South African patent. The patent must be maintained according to Eswatini's regulations, including timely renewals and fee payments to keep it active and enforceable. 

Conclusion 

Patent re-registration provides an efficient and cost-effective way for businesses to extend their intellectual property protection globally. By utilising existing patents from respected jurisdictions such as the UK, US, or EPO, companies can avoid the complexities and costs associated with filing new patents in every country.  

This process of re-registration not only simplifies the expansion of IP rights but also enables companies to capitalise on new market opportunities with minimal financial and administrative burden.  

Engaging with knowledgeable patent attorneys to devise a strategic patent protection plan that accounts for re-registration possibilities is crucial in ensuring that businesses maximise their patent portfolios across borders whilst minimising the financial implications. 

References 

1. European Patent Office (n.d.) Cambodia-US patent validation.  Available at: https://www.epo.org/en/about-us/foundation/validation-states (Accessed: 16 September 2024). 
2. European Patent Office (n.d.) Validation states.  Available at: https://www.epo.org/en/about-us/foundation/validation-states (Accessed: 16 September 2024). 
3. GOV.UK. (n.d.) Extension of UK intellectual property rights abroad: Countries A to B.  Available at: https://www.gov.uk/government/publications/extension-of-uk-intellectual-property-rights-abroad/extension-of-uk-ip-right-abroad-countries-a-to-b (Accessed: 16 September 2024). 
4. GOV.UK. (n.d.) Extension of UK intellectual property rights abroad: Countries C to H.  Available at: https://www.gov.uk/government/publications/extension-of-uk-intellectual-property-rights-abroad/extension-of-uk-ip-right-abroad-countries-c-to-h (Accessed: 16 September 2024). 
5. GOV.UK. (n.d.) Extension of UK intellectual property rights abroad: Countries I to N. Available at: https://www.gov.uk/government/publications/extension-of-uk-intellectual-property-rights-abroad/extension-of-uk-ip-right-abroad-countries-i-to-n (Accessed: 16 September 2024). 
6. Intellectual Property Department. (n.d.) Patent basics. Available at: https://www.ipd.gov.hk/en/patents/patent-basics/index.html (Accessed: 16 September 2024). 
7. IP Australia (n.d.) International IP protection. Available at: https://www.ipaustralia.gov.au (Accessed: 16 September 2024). 
8. European Patent Office (n.d.) Cambodia-US patent validation. Available at: https://www.epo.org/en/about-us/foundation/validation-states (Accessed: 16 September 2024).