Dave Morgan, an IP specialist here at Business West, discusses the key points to be aware of when managing intellectual property overseas.
- Get advice
- Your brands, inventions and creativity are key business assets; do get expert advice on how to get the most out of them.
- 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.
- Use employee agreements for inventions & other IP
- Make use of employee contracts & agreements to clearly reinforce intellectual property and related issues, such as keeping inventions as company assets and non-disclosure agreements in employee contracts.
- 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 and
- 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.
- Leave it too late to register your IP
- Even if you do not sell or manufacturer in a particular country, such as China or India, it may be worth registering your rights. Many countries use a first to register system which means that if you do decide to enter these markets 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 - Keep it a trade secret
- 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, but on the other hand, if your trade secret is exposed, you will find it difficult to protect.
- Give away your rights to distributors
- Often companies fail to get distribution and manufacturing rights clearly defined in contracts in order to push the deal through. Don’t make this mistake and ensure you include confidentiality, non-competition and manufacturing limitations in your contacts.