International IP Protection: The Questions to Ask
As companies transition out of China and move elsewhere, my law firm’s international IP attorneys are helping them protect their IP during and after this transition. This blog post delves into the critical questions every business should ask itself before entering a foreign market.
The following are the eight questions we suggest companies starting a business in a foreign country should ask about their own intellectual property before they start doing business in that foreign country, be it Mexico, Spain, Japan, Thailand or wherever.
1. Trademarks
Can we adopt, use, and register as trademarks the names we want to use for our products or services in the foreign country? Practical Tip: Your trademark almost certainly does not apply outside your own country.
2. Patentability
Is any aspect of our IP new, inventive, and useful and therefore potentially patentable in the foreign country or anywhere else relevant to our business? Practical Tip:Patent laws are not uniform worldwide.
3. Confidentiality
Have we instituted procedures to keep our potentially patentable inventions confidential until a patent application may be filed? Practical Tip: Confidentiality agreements and internal protocols can be critical, before and even after you secure your necessary foreign country IP filings.
4. Third-Party Patents
Are there any third-party patents that could prevent us from selling our services or products in the foreign country or even from manufacturing our products there or anywhere else? Practical Tip: Conduct thorough patent searches in potential markets before you enter and face lawsuits.
5. Copyrights
What aspects of our products or services are protected by copyright? Practical Tip:Understand the level of copyright protection and enforcement in each country in which you will be doing business.
6. Design Patents
Is the design of our product protectable as a design patent in the foreign country or elsewhere? Practical Tip:Evaluate the visual aspects of your product for international design patent protection, especially if you are not able to secure a utility patent.
7. Third-Party Design Patents
Are there any third-party design registrations that could prevent us from selling our product in the foreign country or elsewhere? Practical Tip: Conduct comprehensive searches for existing design registrations in potential markets before you enter and face lawsuits.
8. IP Ownership Agreements
Do we have written agreements with our foreign country employees and manufacturers that clearly assign to us any IP we create with them and that provide for maintaining the confidentiality of our information and our trade secrets? Practical Tip: Draft clear, country-specific IP agreements with all local partners, otherwise, you risk “gifting” your IP to those with whom you do business.
Conclusion
Navigating international IP is not just about avoiding pitfalls; it’s about leveraging intellectual property as a strategic tool for your company’s global success. Taking your company into new markets requires a well-informed, proactive approach to protecting and enhancing your IP. By asking the right questions, learning from others’ experiences, and understanding the nuances of international IP laws, you can protect your innovations and pave a path for international growth.
