By Graeme McCallum
There are two main IP considerations for exporters: (1) avoiding potential infringement of existing third party rights; and (2) protecting their own rights in the new market of interest.
It is recommended that companies start considering IP at an early stage and plan ahead, not least because it might take time to put new IP protection in place and to conduct freedom to operate reviews.
An IP review should help you understand your IP assets and the risks – in particular it should consider whether you can afford not to be able to own/use your IP or offer all your products and services. The assessment should also consider what other third parties will want to do.
It is recommended that you identify and protect IP before exporting to a new market and undertake the relevant level of due diligence to minimise risk when you start to export.
IP rights to be considered would include
- Trademark protection, relating to brand, image and reputation
- Patents, covering innovations in products, processes or packaging
- Design protection, relating to the shape or appearance of products or packaging
- Copyright works ownership, such as logos, marketing materials, instruction manuals
- Trade secrets, commercially sensitive or confidential information being shared with third parties
Main Action Points
- Identify IP in the business and IP that will be used in the export market
- Who owns the IP?
- Are any additional licences required?
- Scope and coverage of existing rights sufficient for the export market?
- Implement additional protection where necessary
- Is there freedom to operate in the export market?
- Conduct clearance searches as required
- Will any IP rights be used by third parties, eg agents or distributors?
- Ensure agreements address IP use
- Does the export market have technology transfer regulations?
- Use NDAs when having preliminary discussions with prospective partners
Healthcare & life sciences sector
For Healthcare/life sciences businesses there are very specific points to address with new patent protection, perhaps requiring different claims for different countries and considering local patentability issues. For example, whether methods of treatment and diagnostic methods are patentable?
Supplementary Patent Protection (‘SPC’) may be available to extend patent protection for active ingredients in pharmaceuticals and plant protection products that are subject to authorisation by regulatory authorities.
The management of data in trials should also be considered both with respect to data exclusivity and data protection. Regulations governing data exclusivity and data protection may vary across different countries.