Proactive IP Management for Taking a Business Overseas

A recent report from the Export Council of Australia found that the majority of Australian exporters had relatively low awareness of the importance of the intellectual property they owned and poor practices for managing that IP when taking their business overseas – in particular into the Chinese and ASEAN markets.

 

International IP Business Strategy

When taking your business overseas, it’s important that your strategy includes a plan for managing your IP.  You will need to understand what IP your business owns, and how to both protect and enforce it in those countries you’re entering.

The strategy you adopt will depend upon a number of factors including the number of jurisdictions you are entering and the associated costs.

By adopting a proactive approach and protecting your IP assets before you enter a new market, you can strengthen your business’s competitive position and reduce the risk of IP breaches

 

International Mechanisms for IP Filing and Management

Filing and managing IP internationally can be both complex and expensive.  To assist applicants, there are several international treaties that facilitate filing in multiple jurisdictions:

  • The Patent Cooperation Treaty (PCT) is a mechanism for filing a single, international patent application, that can subsequently proceed into national patent filings in designated territories
  • The Madrid System allows for the filing and subsequent management of trade marks in multiple jurisdictions, using a single application
  • Similarly, the Hague System uses a single application for the filing and subsequent management of industrial designs in multiple jurisdictions

Further, there are additional agreements covering the international filing and management of other types of IP that may be relevant for your business.

 

IP Australia Report

The following findings emerged from the Australian study:

  • The need for a proactive mindset around IP as part of your commercialisation strategy, in order to identify, understand and protect your IP from the outset, thereby managing risk and reducing the likelihood of breaches
  • Having a clear brand strategy based upon a strong understanding the filing options available (both national and international), and which to best use to meet your business’s objectives
  • Ensuring appropriate foreign representation to ensure your IP strategic objectives are efficiently and appropriately met in a cost-effective manner
  • Establishing a trusted network of local business partners in your destination countries who can support you in navigating foreign IP landscapes effectively and in the best interests of your business

These are valuable lessons that New Zealand businesses can learn from.

Alistair Curson

 

References

IP Australia. (2020, May). “Study into the experience of Australian firms enforcing their intellectual property rights in Asia”. Retrieved November 10, 2020, from: https://www.ipaustralia.gov.au/sites/default/files/reports_publications/study_into_the_experience_of_australian_firms_enforcing_ip_rights_in_asia.pdf

IP Australia. (2020, October 21). “Awareness about the value in protecting intellectual property assets low among Australian exporters”. Retrieved November 03, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/awareness-about-value-protecting-intellectual-property-assets-low

IP Australia. (2020, October 21). “Study into the experience of Australian firms enforcing their intellectual property rights in Asia”. Retrieved November 03, 2020, from: https://www.ipaustralia.gov.au/tools-resources/publications-reports/study-experience-australian-firms-enforcing-their-intellectual

IP Australia. “Study into the experience of Australian firms enforcing their intellectual property rights in Asia”. Retrieved November 03, 2020, from: https://www.ipaustralia.gov.au/sites/default/files/reports_publications/study_into_the_experience_of_australian_firms_enforcing_ip_rights_in_asia_snapshot.pdf

World Intellectual Property Organization. “Hague – The International Design System”. Retrieved November 10, 2020, from: https://www.wipo.int/hague/en/

World Intellectual Property Organization. “Madrid – The International Trademark System”. Retrieved November 10, 2020, from: https://www.wipo.int/madrid/en/

World Intellectual Property Organization. “PCT – The International Patent System”. Retrieved November 10, 2020, from: https://www.wipo.int/pct/en/

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