Intellectual Property Issues in Exporting

Tamara NanayakkaraCounsellorSmall and Medium sized Enterprises DivisionWorld Intellectual Property Organization

H-racer – Horizon technologies

The H-racer is the smallest hydrogen fuel cell car in the world. The car uses a real fuel cell and its own on-board hydrogen storage system and it does not need batteries. The Hydrogen Station will provide the H-racer with an unlimited supply of clean energy. To create free hydrogen fuel add water to the station's tank! Fueling is animated by a special blue light display.

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Patent

Design

Trademark

Copyright

Trade secret

1.Competitive Advantage

The IP system (through patents, design rights, trademarks, GI, copyright and trade secrets) provides exclusivity over the exploitation of innovative products and services, creative designs and business identifiers Protects the product in the market Exploit through licensing Prevent a competitor

The right to prevent others from using and benefiting from that creativity also means you have to respect the rights of others

Imitation is the most sincere form of flattery but do not “flatter”others. Avoid infringement. Analyze freedom to operate by conducting a search as to whether there are other similar or conflicting IP registered in that market (or used - trademarks) H2 Registered by GM in OHIM, hydrogen fuel cell

technologies registered

2. IP Protection is territorial It is important to keep in mind that IP are only

valid in the country or region in which they have been granted. Therefore applying for IP registration in other countries is important if there is an intention to export IP considerations are also relevant in deciding on

the destination market; high tech companies are reluctant to go into markets that are not “IP friendly”

Some provisos to the general principle that registration has to be sought in the destination country Copyright is automatically available through the

provisions of the Berne Convention. No requirement of registration

Trademarks also could be valid through use Some countries recognize unregistered designs Trade secrets by definition are not registered

Obtain IP Rights Internationally - National Route National route - Apply in each country,

pay fees, translation into national languages

Obtain IP Rights Internationally - Regional Route Benelux Office for IP (TM and Designs) African Regional Industrial Property Office (ARIPO) Eurasian Patent Office European Patent Office Office for the Harmonization of the Internal Market

(TM and Designs) Organisation Africaine de la Propriété Intellectuelle

(OAPI) Patent Office of the Cooperation Council for the

Arab States of the Gulf

Obtain IP Rights Internationally - International Route WIPO Administers the Madrid, Hague and PCT Systems for

the international registration of marks, designs and patents Madrid and Hague – international application valid in the

designated countries unless rejected within a specified time PCT – international application subject to international

phase (international search and patentability report – and a preliminary examination report, if required) followed by the national phase. Here the designated countries decide on patentability

This also means that if a particular invention, design or trademark has not been protected in a particular country by registration (or in the case of trademarks by use) it is available for use by third parties Do not enter into a license in these situations. It is

not necessary

3. Differing national systems

Trademarks: use registration Patents: first-to-file first-to-invent Software: copyright patents Databases: copyright sui generis Designs or works of applied art: copyright ID

4. There are deadlines for applying for IP protection abroad... Priority Period Once an application for a patent or design right has

been made domestically an international application has to be made within the “priority period”. Once that period has lapsed it is too late to apply as novelty has been lost.

Patents: 12 months

Designs: 6 months

5. Disclosing a product without protection could be risky Patents and designs are required to be novel to

merit protection If a product needs to be disclosed it should be

done in a confidential context (NDA). If not, the novelty could be lost and an

application for registration be rejected Grace period in some countries

Attention while displaying at industrial fairs H-racer introduced at german toy fair

6. Suitability of trademarks

Check whether the mark has undesired connotations or is likely to be rejected in that country Chevrolet marketing its Nova car in Latin America (Nova = no go) Initial Chinese characters used by coca cola in China (“bite the

wax tadpole”. Later changed to “happiness in the mouth”) Gerber picture of happy baby. In parts of Africa, label denoted

what was in the bottle

7. Beyond Exclusivity When relationships such as JVs, licensing

and franchising arrangements are formed, using IP as a strategic tool, knowledge (and not necessarily a product) is exported.

Owning IP translates into a greater bargaining strength in entering into such partnerships. issues of control, use and exploitation arise as well as of

ownership of new IP Some countries have rules governing what can be exported

and with whom it does business with

The Corgi H2GO is a world first because you can actually steer it unlike previous models which went in a straight line. It works by charging the filling station using the solar panel, then pouring water into the chamber where it breaks down into hydrogen. The hydrogen is then turned into electricity using a fuel cell. It can do two days of continuous driving on less than a glass of water.

8. Enforcement - border measures Under the TRIPS Agreement a state must

adopt procedures enabling a right-holder suspecting the importation of counterfeit trademark or pirated copyright goods, to apply to the customs for confiscating the goods

They could even act on their own without an application

Check list *

Know what you have Decide which information, secrets, processes are

of value and treat it accordingly Decide which IPR needs to be registered in which

market Careful design and production

Design products and services to minimize risk of abuse

Retain critical design and production activities in home country

Change key elements in products and packaging regularly

Incorporate tracers or fingerprinting into product/package design

Know your markets and business partners Avoid risky markets or test them with older

technologies Perform due diligence checks on contractors and

partners Maintain direct· contact and visits with production

sources and distributors Monitor production, packaging, overruns, supply

chain.

Know your distributors, markets, staff, and customers Educate them about value of your genuine

products/services Collect information from them about possible fakes Use non-disclosure or secrecy agreements Insert IPR protection clauses in commercial

contracts Work with the experts

Seek advice before trouble arises Consider using in-house legal team, patent

attorneys, auditors, investigators Inform IPR-related authorities about your products

and keep in touch with them

*IPR Help Desk Bulletin No 36 November – December 2007 “ Intellectual Property Rights (IPR): “Be prepared”, Stephanie Mitchell, Administrator, DG Enterprise and Industry - European Commission