Protecting Your IP Abroad

When a small company is ready to expand and is considering manufacturing or selling its product outside of the U.S., there are issues that they must consider when developing an intellectual property strategy for the global stage.

First, it goes without saying that when your company is ready to begin executing an international intellectual property strategy, you should retain legal counsel that is experienced with intellectual property laws overseas. However, if you are still deciding whether your company is going to need an international IP strategy, you should consider whether you will ever manufacture or sell/export your product in other countries (even in neighbors such as Canada or Mexico); moreover, will your company even be able to afford to protect its IP internationally?

Once your company decides that an international IP strategy is something that will be both necessary and possible for the company (at least down the road), you will first need to review where your company will be operating. Some countries have much more stringent registration requirements than the US, so it is often best to know what the requirements are even before you go to market in the U.S. to make sure that you do not disqualify yourself. However, there are international treaties, such as the Patent Cooperation Treaty or the Madrid Protocol, that do make it easier to register and/or enforce IP in other countries, so it is best to understand how those treaties work as well (and also know what countries are NOT part of those treaties).

In addition to a registration strategy, you should also think about how your company will protect its IP, not only from third-parties actively trying to steal IP, but even from overseas partners. You will need to conduct due diligence with foreign manufacturers, distributors, retailers, and exporters to make sure they are trustworthy.