Ensmarten Saturday: International IP issues for startups
By Beau Jackson Congratulations! You have developed or launched an innovative new product or service, and your business dreams are becoming a reality. It’s all very exciting. One thing you may not have considered much, however, is whether your innovations or brand are susceptible to infringement in the international context. Will competitors try to make…
By Beau Jackson
Congratulations! You have developed or launched an innovative new product or service, and your business dreams are becoming a reality.
It’s all very exciting. One thing you may not have considered much, however, is whether your innovations or brand are susceptible to infringement in the international context. Will competitors try to make a knock-off product or steal your trade secrets? Are foreign companies going to ship infringing articles to the U.S. market? Protecting your intellectual property (IP) is key. Here are some fundamental suggestions to thwart such threats to your growing business.
General Recommendations for International IP Protection
• Control: YOU control your technology! Do not give it away to make deals, regardless of pressure from foreign governments or business partners.
• Risk: The likelihood of IP theft is sometimes greater with overseas joint ventures than with just exporting products. Be careful when entering into a foreign JV.
• Research: Before investing in or exporting to a foreign market, research that country’s IP system. The World Intellectual Property Organization (WIPO) database identifies IPR offices.
• Focus: Prioritize foreign activities in WTO-member countries. The TRIPS Agreement applies to all WTO members and requires signatories to uphold specific IPR requirements.
Contractual Considerations for International IP Protection
When entering a contract with a foreign business partner, be sure to include clauses on:
• Ownership of brands, including translations thereof
• Enforcement of existing IP
• Ownership of new IP that gets created as part of the partnership
• Dispute resolution
Protecting IP in the Trade Context
• Register your trademarks and copyrights with U.S. Customs & Border Protection.
• Patents and trademarks are geographic-specific. Try to obtain such IPR in all countries where you are selling goods or services.
• A business may seek an “international” patent under the Patent Cooperation Treaty, which permits a single application to provide registered protection in the 148 signatory countries. This can be done through the U.S. Patent & Trademark Office.
• If faced with infringing imports in the U.S. market, take action through Section 337. This statute, administered by the U.S. International Trade Commission, makes it unlawful to import, sell for importation, or sell within the United States after importation any article that infringes any type of valid IP (registered or otherwise). Crucially, Section 337 offers powerful remedies: exclusion orders and cease-and-desist orders that completely ban the competitor’s products from the U.S. market. Section 337 is the fastest and most effective way to curtail infringing imports!
IP is often the most crucial asset of a promising startup, whether it consists of patents, trademarks, copyrights, trade secrets, or simply branding and internal “know-how.” It is important that startups be proactive in protecting their IP and other sensitive information, particularly in the context of foreign markets and international trade. In today’s modern economy, protecting against infringement and misappropriation requires a global, forward-thinking strategy. But thankfully, there are many practical tools that startups can use to defend themselves, both here and around the world.
Beau Jackson is a Kansas City-based partner with the law firm Husch Blackwell LLP. He practices in the Intellectual Property group of the firm’s Technology, Manufacturing & Transportation industry team.
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