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Five Tips for Protecting Your Intellectual Property in Global Business

April 23, 2014

Ken Mouradian is the Director of the International Trade Administration’s Orlando Export Assistance Center.

You spent the time and money to build your business, including the development of products and services (patents, trade secrets and copyrights), business methods (trade secrets), brands (trademarks and service marks), and your presence on the Internet (trademarks and associated domain names, copyrights). Why wouldn’t you protect these Intellectual Property (IP) assets from unauthorized use?

Stopfakes.gov is your portal to resources for protecting intellectual property.Many small businesses are at a disadvantage in not having the expertise or resources to prevent theft of their intellectual property in the global marketplace. So in recognition of World IP Day on April 26, here are some simple, practical measures that any exporter can take to protect their IP assets:

  1. Conduct an IP audit. An IP audit will document the assets that you own, the assets that you may be acquiring, and how you’re using other people’s IP. It should support your export marketing plan, as an IP audit allows you to make business decisions about which assets to protect in each market. It doesn’t have to be elaborate; and it’s something that you can do yourself.
  2. Own your business… all of it! If you allow your foreign business partner to register your IP, in most foreign countries, they become the “right holder.” You need to register your own IP assets and record trademark and copyright registrations (and in some countries, design patents) with the customs administration to block the import and export of infringing items.
  3. Know your partners. Your local U.S. Export Assistance Center can help you to qualify existing or potential foreign business partners. Include provisions in your contracts that require the use of original and unaltered products and preclude the partners’ registration of your IP.
  4. Monitor the use of your IP. Plan to visit the market regularly; and use track-and-trace technology like RFID or bar codes to make it easier to audit products and spot fakes. Monitor domain names, e-commerce and auction platforms; and use Internet search engines – including image search – to find infringing products online. Include the obligation to report instances of infringement in your contracts with foreign business partners; and train business partners to spot fakes.
  5. Have an enforcement strategy. Make it part of your export marketing plan to know the administrative and legal relief available to you to enforce your Intellectual Property Rights in each export market. STOPfakes.gov offers country toolkits for select markets. You can also obtain country-specific information from U.S. embassies by contacting your local U.S. Export Assistance Center.

There is no substitute for qualified legal counsel. However, there is a lot that you can do yourself to get started. For more information, please visit www.STOPfakes.gov and the Inventors Resources Center from the U.S. Patent and Trademark Office.

8 comments

  1. IP is the most valuable asset a business has. It must be protected.


  2. IP extends to food supplements, as well. As a business partner in a worldwide weight loss supplement maker, I take the time to read about other manufacturers who might try to reverse engineer the proprietary blend of natural ingredients. If I spot one that is sporting key ingredients I get suspicious, and if the suspicion deserves more attention I’d get it analyzed. I think the author said it best that while there’s no substitute for competent legal counsel that you can do a lot to get started yourself. Keep in mind that the weight loss market is one of the biggest targets for knockoffs, so it’s important to be vigilant.


  3. Intellectual Property is being taken seriously in China. Still need time to protect the rights totally.


  4. This article is very interesting. Thank you very much for sharing


  5. This is fine if you have the capital to fight to protect your IP. I know so many people who have thought about trademarking and protecting IP only to be told by patent attorneys not to bother unless you have at least 1million dollars to fight to protect your IP


    • Thank you for making such a good point! While there is certainly a dose of realism in your comment – no one has unlimited resources and you need to be prepared to make business decisions about what’s important – it is equally true that you can’t leave yourself completely exposed and hope that nothing will happen. That’s why I started this post talking about IP audits. It’s something that you can do yourself (it will cost you your wage hours) that enables you to make resource allocation decisions. An IP audit is part of the overall cost of your IP portfolio but it’s negligible compared to the misinformation you’ve been given. Similarly, the cost to record a Federally Registered trademark with Customs and Border Protection, my second point, is $190 per International Class of goods. It’s also $190 to record a copyright (see https://apps.cbp.gov/e-recordations/). For most companies reading this blog, they’d have to paper the world and, even then, they wouldn’t approach $1 million dollars in fees relating to recordation. Neither does it cost a million dollars to qualify foreign business partners and add language to contracts concerning the use of original, unaltered products or to preclude partners’ registration of your intellectual property, which was my third point. One of my yet-to-be-published posts concerns partner qualification; however, to give you a realistic idea for the sake of budgeting, the International Trade Administration can research foreign companies on behalf of U.S. exporters and provide a detailed report for between $600 and $900… about the cost of a flat screen TV. If $600 – $900 will wipe out any expected ROI, why would you export to that market? Shedding a bad distributor will likely cost you more than $600 – $900 when all is said and done. I could go on (i.e., the cost to visit foreign markets is air fare, per diem and opportunity cost – and you’re already visiting your export markets periodically) but you get the point. I tried to focus this post on things that you could do yourself that do not cost a lot of money in the hope that at least some of this information is actionable. Yet, to reiterate, your point is well taken. It’s about business decisions and resource allocation.


  6. Good advice. Thanks for sharing.


  7. I would say this is a blueprint ! Great advice. Thank you very much for sharing



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