Intellectual property: the dos and don’ts of managing IP overseas
Bill Russell is Head of Bilateral Relations at the UK Intellectual Property Office, the official government body responsible for intellectual property (IP) rights in the United Kingdom.
IP (Intellectual Property) is often a company’s most important asset. Your trade mark and branding is your public image and tells customers who you are and what you do.
Your web site, adverts, music and images are similarly valuable company possessions. Your ideas, innovations and designs are what makes your company different, or even unique. But all too often a company’s IP assets are not fully protected, especially when going overseas – where IP rules can be very different.
Your brands, inventions and creativity are key business assets. Make sure you get expert advice on how to get the most out of them. The IPO web site will give you some good general advice.
Protect all your IP, not just patents
Trade marks, copyrights and trade secrets are all effective ways to protect aspects of your intellectual property and should form part of your overall IP protection strategy. Intellectual property rights give very specific protection and relying on just one right will not protect all aspects of your business. The IPO can provide you with advice on the types of IP and how best to use them.
Use employee agreements for inventions and other IP
If you employ staff, make sure your employee contracts and agreements clearly reinforce intellectual property and related issues, such as keeping inventions as company assets and non-disclosure agreements in employee contracts. The IPO can give you advice on non-disclosure agreements.
Get good translation of contracts and agreements
Companies are sometimes surprised to learn that certain points were not included in the contract. Ensure you get a good and trustworthy translator who understands your business as well as your own language and the language used in the country where you wish to do business. You can read more about the importance of translation in general in this Open to Export article about the role of translation when entering an international market.
Use a range of protection methods
By using a range of protection methods you can reduce the risk of any single process failing. Look to combine physical security measures, annotated designs and blue prints, confidentiality agreements as well as registered IP. The IPO has some online information that can provide you with some general advice on the types on IP and how best to use them.
Assume you are covered
IP rights are normally territorial, only covering the country or region in which they are issued. But you can extend your protection using one of the international treaties and protocols. The World Intellectual Property Office has services which will explain how to do this.
Leave it too late to register your IP
Even if you do not sell or manufacture in a country, particularly emerging markets such as China or India, it may be worth registering your rights there.
Most countries use a “first to register” system which means that if you do decide to enter these markets in the future, you might find that your rights have already been registered by another company and you will have difficulty operating under the same name.
Publish anything about your invention
Don’t publish any details on your invention or research until you have applied for patent protection. As soon as you do, you lose novelty and will not be able to file it as a patent in any country. Extend your patent to other key markets at the same time as registering it in Europe.
Assume a patent is the best solution
Patents give you exclusive rights to that invention for no more than 20 years. Once the patent expires, the know-how can be copied. By keeping it a trade secret you could keep it confidential forever. However, if your trade secret is exposed, you will find it difficult to protect. See this article on trade secrets for more details.
The IPO also has useful guidance on how to apply for a patent to help you decide if a patent is the best protection for you.
Give away your rights to distributors
Companies often fail to get distribution and manufacturing rights clearly defined in contracts because they are keen to push the deal through. Don’t make this mistake and ensure you include confidentiality, non-competition and manufacturing limitations in your contacts. This IP health check gives help on franchising, licensing and enforcement issues, while the Open to Export Agents and Distributors webinar also provides some useful information and advice for getting the right arrangement with your sales representatives.
For more information about managing IP overseas check out the government’s guidance on exporting your intellectual property. This includes links to our overseas based staff that can provide free and impartial IP advice and support. There are also other Open to Export articles on intellectual property abroad and protecting your business online.