Intellectual Property Risks: The Pitfalls Every Exporter Should Avoid Part 2

Pitfall No.6: Are You Infringing The Rights of Others?
When you introduce your products or services into a new market/country your run the risk of infringing on other’s IP rights. The trade mark that you are using may have already being registered (refer to Pitfall No.1 and No.2). The technology in your products may belong to another party who holds the patent in that country. A good example of this, is the long running skirmishes wryly termed the “Clash of the Titans” between Apple, Samsung and HTC, where the parties sue each other for allegedly infringing their patent. Apple went so far as to obtain a preliminary injunction against sales of the Galaxy Tab 10.1 in every EU country apart from the Netherlands, which was subsequently limited to only the German market. Solution: A professional search should be carried out within the IP database of the country where you intend to enter your products/services into in order to ascertain the legality of your imports. And if there is no prior right being registered, proceed to register your IPs immediately.

Pitfall No.7:Deadlines; The Ticking Time Bomb.
Can’t imagine being late for your first date. You could do worse by missing a deadline for your IP application. Almost every IP application/ registration/proceeding has deadlines, however, different IP Offices will allocate different time period for you to take the necessary actions. These periods range from 2 weeks to 2 years. Therefore, keeping track of those deadlines is crucial to the survival of your IP Rights. While certain IP Regulations are more lenient towards the late comers with grace periods of certain lengths (although often with a handsome penalty fee); other IP Regulations are more draconian in that missing a deadline means your IP is “as dead as a Dodo”. Solution: Write down the deadlines in your diary, stick yellow notepads everywhere. However it is advisable to have a professional IP firm take care of your IP. This way you can sleep easier at night without having to worry about your deadlines.

Pitfall No.8: Early Disclosure of Your IP Rights Without Protection=Charity
Would you buy a car and give away the key to anyone? Not unless you are Oprah Winfrey. Disclosing your IP before you protect it is one of the most charitable acts known to men. By unveiling your invention to the public before you file for patent protection you may jeopardize your chances of getting a patent registration. It would also be a good opportunity for copycats to copy your technology while you have no locus standi (legal standing) to take any legal action. The same applies to trade mark as well. Solution: Register your IP as soon as they are created and preferably before you show it to the public, unless you are feeling particularly charitable.

Pitfall No.9: The International IP Systems That You Could and Should Be Using
If you are planning to expand your business into several countries, then instead of filing yout IP in each individual country, it may be advisable to make use of several International IP Systems/Mechanisms available to simultaneously apply/register your IP in various countries. International filing systems like the Madrid Protocol (84 countries) for trade marks, and PCT (144 countries) for patents should simplify your IP application process. Other systems like OHIM’s European Community Trade Mark (27 Countries) and the EPO’s European Patent will grant trade mark or patent registration. Solution: Seek advice from an IP firm on which systems to use. This because the international systems can only be used to file your IPs in the countries which are members to the systems. And systems like the Madrid Protocol, may not make economic sense if you have less than 5 countries to apply to, due to the high basic fee that you will have to pay and the high exchange rate between the Swiss Franc and Ringgit.

Pitfall No.10: The Perils of Licensing/Assignment
One of the ways to exploit your IP rights is by licensing your IPs to another party. Licensing is akin to putting your IPs up for rent. However, such licensing will not be possible if your IPs are not filed/registered. Therefore if you are planning to set up or introduce your franchise in another country, you will have to register your trade mark before you can license the use of your trade mark to your franchisee. The same is true with Patent. You can also buy or sell IPs by assignments. In essence an assignment is a change of ownership, like selling a property. Certain countries will allow you to assign your IP rights after filing while other countries require your rights to be registered. In most countries, both licensing and assignments must be registered with the IP office in order for them to take effect. Many businesses have been caught out by forgetting to register their assignments/licenses, thus they end up paying good money for nothing. Solution: Hire an IP firm to represent you in preparing the licensing/assignment agreement and also to register them with the IP office. In a merger or acquisition, take care to include a provision in your contract to deal specifically with the IP rights of the companies.

Leave a Reply

Your email address will not be published. Required fields are marked *